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1920 
Copy 1 



JOURNAL 

PATENT OFFICE 
SOCIETY 




if 



Published by tbe Patent Office Society, W'asbington, D. C. 



PATENT OFFICE SOCIETY MANUAL 

— OF— 

DETAILS OF PATENT OFFICE PRACTICE. 



9^ 

E. S. GrLASCOCK: 

Principal Examiner, Div. 47; 
and ^ 
H"B.%ilcox: \'^^^ 
Former Assistant Examiner, Div. 44. 



COPYRIGHT, 1920. 

By 
EUSTACE S. GLASCOCK. 



INDEX. \^'^0■ 



1 



Page 

Abandoned applications 43,44 

Action after allowance 38 

Allowance 31 

Amendments and amended applications 29, 42, 50 

Appeals 40 

Application 6 

Petition 9 

Power of attorney 10, 31, 44 

Specification 11 

Oath • 12 

Model 13 

Drawings 14 

Comanissioner's Decisions 21 

Claims examinable in other divisions 2 6 

Classification .....' 19 

Classification of applications 8 

Cross-references 37 

, Division and election of species .' ^ 42 

Examination of applications 7 

As to merits 17 

For novelty 23 

"Examiner prepare answer" letters 51 

Examiner's Amendments , 35,44 

Examiner's letter 26 

Foreign patents 20 

Forfeited applications 4 3 

Interferences 4 6 

Interference search 34 

Issue of patent 44 

Law Library 21 

Manuscript decisions 21 

New matter 33 

Official Gazette 51 

Orders and Notices 53 

Perpetual Motion devices 14 

Petitions and Appeals 39 

Petition under Rule 78 39 

Petition to revive 4 

Plurality of applications by same party 19 

Receipt and distribution of applications 5 

Reissue 4 6 

Renewal applications .44 

Returned letters 28 

Rule 75 50 

Scientific Library 20 

Signatures 9,10,11,12,15,31,32 

Special cases 4 3 

Transfer of applications 8 

Transfer of patents 21 









6' INTRODUCTION. 

5 



^ 



In order that the assistant examiner shall properly 
perform his duties it is necessary that he should form a 
just conception of his position and responsibilities with 
reference both to the public and to the inventor, and ac- 
quire a full appreciation of the work in which he is 
engaged. 

A patent is sometimes regarded as a contract between 
the public and the inventor, the consideration on the 
part of the inventor being such a complete disclosure of 
the invention as will enable any one skilled in the art 
to which the invention appertains to make, construct, 
compound, and use the same. The consideration on the 
part of the public is the protection of the inventor in the 
manufacture, use, and sale of his invention for a definite 
tim^e (17 years) by prohibiting the manufacture, use, 
and sale by others without the inventor's consent. 

One function of the patent is to clearly and distinctly 
point out the exact limits of the invention for which the 
patentee is given protection. 

This is done by the claims of the patent and hence it 
is to the claims that the most careful study and closest 
attention must be given. 

In fact, the chief duty of the examiner is to see that 
the applicant is not granted a patent for more than that 
to which he is entitled. To this end all the pertinent art 
must be found and carefully considered. 

As long as the application has not matured into a pat- 
ent it is plastic and may be amended by the applicant to 
bring it into conformity with all Office requirements. 
Once matured into a patent, it is a grant with the gov- 
ernment seal thereon, and is rigid and unchangeable, 
except in special instances, by reissue, disclaimer or 
certificate of correction. It is, therefore, of the utmost 
importance that all imperfections should be cured before 
the application goes to patent. The examiner represents, 
the public in the drawing of this contract, but inasmuch 
as the object of the patent laws is to advance the arts 
and sciences, and this can only be done by granting to 
the inventor a suitable reward for his efforts, it follows 



4 Journal or the Patent Office Society. 

that the public is interested in extending to the inventor 
full protection for what he has done as well as in with- 
holding a grant for what is not his own. 

The fact that most cases of importance are prosecuted 
by competent attorneys may relegate this latter phase 
of an examiner's duties to a secondary position, but it 
should not be neglected. The attitude of the examiner 
should be that of hearty cooperation with the attorney. 
Both should have the same object in view, namely, the 
framing of the grant in such a way as to secure to the 
inventor protection for all that he has added to the 
useful arts and for no more. 



I 



p 



Patent Office Society Manual of Details 
of Patent Office Practice. 



RECEIPT AND DISTRIBUTION OF APPLICATIONS. 



All application for letters patent is received at the Pat- 
ent Office through the mail, by express, or by hand. 

When the application arrives by mail or express it is 
received by the head of the Mail Division. The fee is 
entered on the face of the application papers and a book 
in the Mail Room and is then passed to the Financial 
Clerk. The model, if any, is taken to the Model Room 
with an identification card attached. 

The petition, specification, oath, and power of attor- 
ney, if there be a power of attorney, together with the 
drawing, are forwarded to the Application Room. 

When the application is delivered by hand it is re- 
ceived by the Financial Clerk who retains the fee, notes 
the fact of its receipt thereon, and forwards the applica- 
tion papers to the Mail Clerk, who sends them to the Ap- 
plication Room with those received by mail or express. 

Ill whatever manner the application or any part there- 
of is received in the Office, the date of its receipt is 
stamped thereon at once. The date of receipt of the ap- 
plication in the Office is of the utmost importance and 
the examiner should note carefully the provision of 
Rule 12, Rules of Practice, relative to receipt of mail. 

In the Application Room the application papers, with 
the exception of the drawing, are placed in a jacket and 
the data given below are placed thereon. The drawing is 
sent to the Drafting Division to. be inspected by the Chief 
Draftsman. If satisfactory, he stamps ''Draftsman, Pat- 
ent Office" and the date on the back of each sheet. If 
not satisfactory, the objections are written on the face 
of the drawing in pencil. The drawing is then returned 
to the Application Room. Here it is assembled with the 
specification. 

The Application Clerk mails a receipt to the applicant 
and if the drawing has been criticized by the Draftsman, 
he embodies such criticism therein, stating whether or 
not the drawing can be corrected. 



6 Journal of the Patent Office Society. 

THE APPLICATION. 

A complete application comprises the following parts: 

A petition, 

A specification (with claim or claims), 

An oath, 

A drawing (when required), 

A first fee of $15.00, 

Sometim.es, hnt very seldom, a model (see Enles 
56-61), 

or a specimen is required (see Rule 62). 

The application, with the exception of the drawing, of 
course, when placed on the examiner's desk is in a file 
wrapper. It was placed therein in the Application Room, 
and the following data written on the face of the wrap- 
per:— 

1. The serial number given it in the Application 
room. 

2. The number of the Division to which it is as- 
signed by the Application Division. 

3. The name of the applicant. 

4. The residence of the applicant. 

5. The title of the invention. 

6. The date of receipt of the various parts of the 
application. 

7. The date when it is considered a complete a]")- 
plication. (If the parts of the application have been 
received at different dates, the date of receipt of the 
last part is the date of the complete application.) 



Journal of the Patent Office Society. 7 

8. The name and address of the attorney, if there 
be an attorney. 

9. The name of the assignee and his residence, 
if there be an assignee. 



The Application Clerk assigns the application to the 
Division to which it belongs and an alphabetically ar- 
ranged register is kept of all applications and the Di- 
vision to which each is sent is made part of this record. 

Every morning the applications, including the draw- 
ings, are sent to the Divisions to which they have been 
assigned. The Principal Examiner then takes charge of 
the cases and distributes them to his assistants. 

As soon as received in the Division the class, and usu- 
ally the sub-class, and the examiner's initials are put in 
lead pencil in the upper left-hand corner of file and draw- 
ing by the Primary Examiner. 

Tlie clerk of the Division inserts the page and book 
number of the application in the upper right hand cor- 
ner when she enters the application in her register, so 
that if at any time the examiner wishes to get the history 
of the case it may be found. 

The clerk also writes on the margin of the drawing the 
serial number of the application, the number of sheets 
of drawing, and the book-number alluded to above. The 
back of each sheet must bear the stamp of the Drafts- 
man before the application is allowed. 

Indications printed on the face and back of the file 
wrapper for further data to be supplied later will be re- 
ferred to hereinafter. 

EXAMINATION OF APPLICATIONS. 

The order in which applications are taken up for ex- 
amination is given in Pule 63 and in Order 2210, 1915. 
(Copies of Orders referred to herein may be found in the 
Order Book kept in each Division and in the Chief Clerk's 
Eoom; where the substance of the order is not given 
in the text, the order will also be found in full at the end 
of this pamphlet.) 



8 



JOUENAL OF THE PaTENT OfFICE SoCIETY. 



Upon receiving an application from the Application 
Clerk, and before entering it on the register, each exam- 
iner forthwith decides whether it has been properly as- 
signed to his Division. If in his opinion the application 
does not belong to his Division, and no other Division 
will accept it, he forwards it, together witli the showing 
npon which he relies, to the examiner who, in his opinion, 
should examine it. He also fills out blank form 2-573 
and has it receipted by the examiner to whom he forwards 
the application, and retains it as a charge. If there be 
more than one Division involved, each examiner in turn 
makes a prompt report upon the application, with the 
necessary showing, and the last examiner to receive it 
sends all the papers to the Classification Division. The 
examiner of the Classification Division decides the ques- 
tion of the proper classification of the application, at- 
taches a card to the file directing the transfer of the ap- 
plication, or its retention in the original Division, as the 
case may be, and also encloses a statement of the grounds 
of his decision. 

If the application is to remain where it is, no further 
procedure is necessary. 

If the application has been assigned to another Divis- 
ion, the clerk records the fact in the record of the case 
in the ''Register of Pending Applications", cancels the 
classification and page marks on the application file and 
drawing, attaches to the application a card, (Form 2-567), 
showing where it is assigned and forwards it to the Ap- 
plication Boom. The transfer is recorded there and the 
case forwarded to the Division to which it has been as- 
signed. 

If an application contains claims to two or more inven- 
tions, and one of them belongs to the Division to which 
the application has been assigned, division is ordinarily 
required by the examiner to whom the case has been 
assigned as this may avoid a needless double transfer. 

The application should be inspected when first placed 
on the examiner's desk to enable him to judge of the 
probability of interference with pending applications, 
and if such interference seems probable, a comparison 
with pending applications must be made. The question 
of possible interference must be kept in mind throughout 
the examination. 



Journal of the Patent Office Society. 9 

EXAMINATION AS TO FORM. 

In reading- the application over for the first time the 
clerical errors and the errors in English should be care- 
fully noted. It is not a matter of importance whether 
the languag;e is the best that could be chosen, but gross 
errors in grammar must be noted and correction required. 
Note in pencil all such errors on the margin opposite the 
points where they occur. In this connection the exam- 
iner should keep in mind Order No. 1455, Feb. 4, 1902, 
which requires that no erasure or any note, interlinea- 
tion, or other mark, in pencil or otherwise be made, ex- 
cept by formal amendment, duly signed, in the body or 
written portions of the specification or of any other papei 
filed in an application for patent. 

Note the requirement that all interlineations and 
erasures made prior to filing the papers, must be referred 
to in marginal or foot notes on the same sheet of paper. 
(See Eule 45). 

Much of the work on an application relates to appar- 
ently trivial clerical details. Failure to give proper at- 
tention to these details increases the amount of corres- 
pondence, befogs the issue on the important questions in- 
volved in the application, and consumes a large portion 
of the time that could otherwise be expended upon the 
merits of the case. 

THE PETITION, (Rule 33). 

If the post office address is omitted it must he supplied 
by a letter over the applicant's own signature. Frequent- 
ly, having given his residence, the post office address is 
only given by street and number, it being taken for grant- 
ed that the city and state is that of his residence. If such 
be the case, completion of the post offices address should 
be required, unless the application is ready for issue, 
when it may be allowed as it stands. The object of re- 
quiring applicant's post office address is to enable the 
Office to communicate directly with the applicant if de- 
sired; hence the address of the attorney with instruc- 
tions to send communications to applicant in care of the 
-attornev is not sufficient. 



10 Journal of the Patent Office Society. 

As to tile matter of amending the petition, the best 
practice now seems to be to allow an attorney to amend 
the same with the exception of applicant's post office ad- 
dress, which can be inserted or changed only on appli- 
cant's reqnest or direction. 

THE POWER OF ATTORNEY, (Rules 17-23). 

Usually a power of attorney is appended to the peti- 
tion. In order that this power may be valid, the attorney 
appointed must be registered. If that is not the case, 
the clerk in the Application Eoom stamps a notice to that 
effect on the margin. In that case, and if, for any other 
reason, the power of attorney is invalid, a statement of 
that fact should be made, and the reason for the invalid- 
ity pointed out in the first letter; and furthermore, it 
should be stated that in the absence of validation of the 
power prior to the next Office action, further correspond- 
ence will be held solely with the applicant. An unregis- 
tered attorney may, however, appoint a registered attor- 
ney to act as his substitute. Associate attorneys whose 
powers have been revoked, must be formally notified of 
such revocation by the examiner. (See Order No. 2024, 
Dec. 20, 1912). 

Generally speaking the death of the inventor termin- 
ates the power of attorney. Hence, an amendment signed 
by the attorney after the death of the inventor should be 
ratified by heirs, administrators or assigns. 

Such an amendment may, however, save the case from 
abandonment. It is therefore entered and ratification is 
called for together with proof of authority of the one 
ratifying the action. See In re Matullah, C. D., 1912, 
page 490. See also pages 36 and 37 post. 

At the present time a revenue stamp is necessary be- 
fore a power of attorney will be recognized, but this 
stamp is not required when the power is executed abroad 
nor when to require it would necessitate its being paid 
for by the Government. 

In connection with Rule 15, the examiner should note 
Order No. 2345, Aug. 16, 1917, which requires every 
power to inspect an application to be approved in writ- 
ing by the examiner in charge of the Division before per- 



Journal of the Patent Office Society. 11 

mission to inspect is granted. The power to inspect must 
he placed in the file and it should he rememhered that a 
power to inspect does not confer the right to obtain cop- 
ies. 

Attorneys and other authorized persons may have the 
file and drawing sent to the Eecord Room for their in- 
spection, but care must be taken that the persons so or- 
dering the files and drawings have proper authority. 

No references, files, drawings, or papers pertaining 
thereto are to be taken out of the Division without a 
charge being left therefor on the clerk's desk. 

THE SPECIFICATION, (Rules 34-95). 

In addition to the requirements of the rules, the citi- 
zenship of the applicant must appear in the preamble. 
(See Chief Clerk's notice to Issue Division of Sept. 18, 
1912.) Where the citizenship is given in the oath but 
omitted in the preamble, it ma}^ be supplied by exam- 
iner's amendment. 

The statement that applicant is in the Arm^^ or the 
Navy satisfies the requirement of residence. 

The title must be appropriate, but not too long, al- 
though the applicant is allowed reasonable latitude on 
this point. 

In connection with Eule 40, Order No. 2018, Nov. 11, 
1912, must be considered. This order states that where 
the application fs ready for allowance, and the first name 
of the applicant is disclosed in the record, but does not 
appear in the preamble to the specification, the Primary 
Examiner will insert the first or Christian name by ex- 
aminer's amendment. If the full first name appears in 
the preamble it need not appear elsewhere in the appli- 
cation, except that it must be written on the file wrapper. 
Where the first name given by the applicant appears to 
be a nick-name, the examiner should require that appli- 
cant furnish his first name or an affidavit that the ap- 
parent nick-name is his true first name. Titles af individ- 
uals should be canceled. 

In case of a joint application, the order of the names 
on the file wrapper is that in which the applicants sign 
the specification. The order in which they sign the pe- 
tition and oath, or in which their names appear in the 



12 Journal of the Patent Office Society. 

preamble, is of no moment, and will be corrected as to 
the preamble by the Issue and Gazette Division. (See 
under heading ''The Drawings", page 15). 

The general statement of invention should be brief and 
concise, and, roughly speaking, co-extensive with the 
claims. Applicant may refer to the general state of the 
art and the progress made thereover by his invention, 
but he is not allowed to make derogatory remarks con- 
cerning the inventions of others, and to designate them 
by name unless to state that he desires to improve on the 
disclosure in a prior patent or application or that he 
makes no claim to the disclosure in a certain application. 

The specification is sometimes so vague and indefinite 
that a new specification should be required, but new speci- 
fications cumber the record and require additional read- 
ing, and hence should not be required or accepted except 
in extreme cases. 

The examiner should keep before him Rule 39 while 
examining the preamble. In applying the provision that 
full names must be given, pay particular attention to 
Order No. 600, which says that "all applications which 
disclose the full name of the applicant in the preamble 
of the specification will be received and considered as a 
sufficient compliance with Rule 40", and that, "When 
the full first name of the applicant does not appear either 
in his signature or in the preamble to the specification, 
the examiner will, in his first official letter, require an 
amendment supplying the omission, and he will not pass 
the application to issue until the omission has been sup- 
plied, unless an affidavit shall have been filed setting 
forth that the full first name of the applicant is the one 
originally given by him". 

The signature to the specification requires no witnesses. 

THE OATH, (Rules 46-47). 

In cases where the oath is in any way defective, note 
Order No. 1838, Nov. 13, 1^10, which says among other 
things: "The oath cannot be amended and if deficient 
for any reason a new oath must be required." The ex- 
pression "only inventor" is not the equivalent of "sole 
inventor" in the oath. 



JOUEKAL OF THE PaTENT OfFICE SoCIETY. 13 

See tliat the venues and the seal of the oath agree, re- 
membering, however, that in many states a notary public 
may administer oaths in any part of the state. (See 
John's American Notary. Copy in Law Library). 

The application should be filed as soon as possible af- 
ter the oath is taken and it has been held that if the ap- 
plication is filed more than five weeks plus the time re- 
quired for transmission in the mails, a new oath must 
be filed. Considerable discretion is allowed in this mat- 
ter and this rule does not apply to divisional, continua- 
tion, and reissue applications. 

In requiring a new oath always give the reason for 
the requirement and state that the serial number and 
date of filing of the application of which it is to form a 
part must appear in the body of the new oath. 

If the consular certificate is omitted, in cases in which 
the oath is taken before a notary abroad, the examiner 
should require a new oath, or a consular certificate. In 
all applications executed abroad, from which the required 
consular fee stamp has been omitted, the first require- 
ment in the case will be that the necessary stamp be for- 
warded to this office to be affi^sed to the affidavit and can- 
celed by the chief clerk of the Patent Office. (See Com- 
missioner's Order 2032, Feb. 13, 1913.) 

This applies only to affidavits taken before consular 
officers. Embassies and legations are not required to at- 
tach fee stamps to papers executed by them. 

The provision in the Eules that no oath may be admin- 
istered by any attorney in the case should be carefull}^ 
noted. 

The supplemental oath referred to in Eule 48 is not 
found in a new application, but occasion for it may arise 
in the course of the prosecution of the case. The rule 
clearly points out the nature of this oath, but it should 
be kept in mind that Rule 48 can not be used to intro- 
duce new matter into an application. It applies only to 
matter originally shown or described but not embraced 
in the statement of invention or claims as originally pre- 
sented. 

THE MODEL, (Rules 56-61). 

The Rules give all necessary information as to the 
model. It may be well to state here that a model is not 



14 Journal of the Patent Office Society. 

directly required by the Office to demonstrate tlie oper- 
ativeness of a device. If operativeness is questioned, the 
applicant is required to establish it to the satisfaction 
of the examiner, and he may choose his own way of so 
doing. 

Perpetual motion devices form the only exception to 
this rule. In this connection attention is called to the 
notice promulgated by Commissioner Newton, on Jan. 30, 
1918, as to the treatment of these cases. This notice 
provides that in all applications involving perpetual mo- 
tion the Primary Examiner should write a letter to the 
applicant notifying him that the application involves per- 
petual motion and citing ex parte Payne, 1904, C. D., 42; 
that if the application were taken up for consideration 
as to its merit the first action would be a rejection on the 
ground of inoperativeness for any useful purpose; that 
the Office deems it fair to give applicants who believe 
they have discovered perpetual motion a word of warn- 
ing that fees paid cannot be recovered after the applica- 
tion has been considered by the examiner, and that it is 
thoug'ht best to give the applicant an opportunity to re- 
cover the moneys paid into the Office. The letter should 
also state when the application would be reached for 
action, and advise the applicant that if he does not desire 
to have the application considered he should immediate- 
ly return the filing receipt with a request that the filing 
fee of $15 be refunded. 

This letter is written on the usual examiner's letter 
paper (2-260) and the original placed in the file. 

THE DRAWINGS, (Rules 49-55). 

The examiner will find the drawing stamped on the 
back with the draftsman's stamp if it is correct as to 
formal matters. If it is not so stamped the examiner will 
find written in lead pencil on the face of the drawing the 
draftsman's objections thereto, and also a statement as 
to whether or not the drawing can be corrected, and the 
cost of such correction. If it cannot be corrected the 
draftsman's notation will state that a new drawing is re- 
quired. The examiner should embod^^ the draftsman's 
statement with regard to the drawing in his letter to the 



Journal of the Patent Office Society. 15 

applicant, and in so doing he should be careful to state 
distinctl}^ that a new drawing* will not be admitted or 
that a new drawing is required, in accordance with the 
draftsman's directions. 

See that the figures are correctly described in the brief 
description of the specification and the reference charac- 
ters properly applied, no single reference character being 
used for two different parts either in the same or differ- 
ent modifications. Every feature covered by the claims 
must be illustrated but there should be no superfluous il- 
lustrations. 

Correction of the drawing may be made only under the 
supervision of, or by, the Chief Draftsman, and no such 
correction or alteration will be permitted in any case, 
except as hereinafter indicated, until after approved 
photographic copies of the drawings have been filed. A 
black line photographic or lithographic print is an '^ap- 
proved ' ' copy, a blue-print is not. 

The Chief Draftsman is the judge of drawings, as to 
the execution of the same, and the arrangement of the 
views thereon; while the examiner is the judge as to the 
sufficiency of the showing. 

To avoid accumulation of canceled sheets of drawings, 
the examiners will not accept nor admit additional or 
substitute drawings, unless such drawings shall have 
been required in a previous consideration of the case. 
Examiners should not require substitute drawings in any 
case unless the Chief Draftsman has first indicated that 
the original drawings cannot be made serviceable. Where 
the cancellation of some of the figures from one sheet of 
the drawings has left the remaining figures with an in- 
artistic arrangement, the Chief Draftsman should be con- 
sulted as to whether the said remaining figures should be 
transferred to other sheets already in the drawings; and 
conversely, when the necessary additional illustration is 
but fragmentary and may be added to the drawings on 
file, an additional sheet of drawing should not be requir- 
ed, but the examiner will ask that the proposed illustra- 
tion be shown in a sketch, which showing will be trans- 
ferred to one of the sheets of the drawings. 

In joint applications, the names of the applicants 
should appear on the drawing in the order in which they 



16 Journal of the Patent Office Society. 

signed the specification. If not, the Office will remedy 
the defect at applicant's request if the names were signed 
by the attorney. If the names were signed by the ap- 
plicants, the drawings are ordinarily returned for cor- 
rection. In the latter case, as in all instances where the 
drawing leaves the Office, a photographic print must first 
be placed on file. 

The examiner, when he finds correction of the drawing 
necessary, should explain the correction and require the 
applicant to furnish a sketch in permanent ink of the 
correction to be made, and file a request that the Office 
draftsman make such correction. If applicant does so, 
the sketch is submitted to the examiner for his written 
approval, and, if given, a print is made of the drawing as 
it originally stood, and placed in the file. ' The correction 
is then made by the draftsman. 

Applicant's request for a change in the drawing should 
be accompanied by a sketch of the proposed change with 
the request that the change be made. The sketch must 
be in permanent ink and should be placed in the file. The 
procedure is the same as above. The correction is at the 
expense of the applicant, and when the Office does not 
require the change the print of the original is also at his 
expense. 

A print is not required for the following changes: — 

To add a few reference characters, 

To change the ordinals of the figures, 

To correct the name of the inventor when written 

by the attorney, or 
To add section lines and their numerals. 

These changes may be made by the draftsman on the 
examiner's request. (See Order No. 2583, June 14, 1920). 
An examiner's amendment authorizing these changes 
should, however, be entered in the file. 

See notice of June 14, 1920, which also says : — 

"To expedite the execution of orders to correct or change 
drawings, it is directed that all letters received in the Drafting 
Division requiring a change in the illustration of structure, be 
delivered to the proper examiner for his inspection and ap- 
proval. Whether the examiner approves or disapproves the 
change, the letter directing the same, with the examiner's rec- 
ommendations, will be attached to the file and drawing and 
immediately sent to the Drafting Division for action." 



r 



JOUEXAL OF THE PaTENT OfFICE SoCIETY. 17 

To avoid tlie withdrawal from the examining divisions 
of files and drawings for a long time, the draftsman 
should retain the file and drawing only long enough to 
make an estimate of the cost, after which they should be 
returned to the examining division with an order for the 
work attached to the drawing. When the case is reached 
in its regular order in the draftsman's division it will 
be called for bv the draftsman and the corrections made. 
(See Notice of July 13, 1906.) 

The present practice however, is to retain the file and 
drawing in the draftsman's room whenever the money is 
on hand to pay for the changes. When this is not the 
case the file and drawing are returned to the examining 
division until the money is received. 

EXAMINATION AS TO MERITS. 

Having noted all objections of the character above de- 
scribed, the application is next to be examined as to its 
merits or substance. 

Sec. 4886, E. S., reads in part as follows: — 



"Any person wlio has invented or discovered any new and 
useful art, machine, manufacture, or composition of matter or 
any new and useful improvements thereof, .... unless the same 
is proved to have been abandoned, may upon payment of the 
fees required by law and other due proceedings had, obtain a 
patent therefor." 



The part of the statute omitted is of the utmost im- 
portance, but it does not add to the conditions of patent- 
ability as it in fact forms a definition of what is meant 
by the term ''new" in the statute. It does this by stating 
the conditions that negative novelty. 

Sees. 4888-4892 inclusive, state the steps which must 
be taken by the inventor to secure a patent when he is 
entitled thereto. 

The examination, made under the provisions of Sec. 
4892, is then to ascertain two things: 1. Is the appli- 
cant entitled to a patent?, and. 2. Has he taken the steps 
required by the statute to obtain it? 

The applicant must be the inventor or discoverer. (See 
exceptions under Sec. 4896, E. S.) 



18 Journal of the Patent Office Society. 

The invention must be an art, machine, manufacture, 
or composition of matter, or an improvement thereof. If 
the subject matter of the application does not belong to 
one of these classes, e.g. the design of a house, ex parte 
Lewis, 54 0. G., 1890, the claims should be rejected as 
being for subject matter not entitled to protection under 
the patent law. 

The subject matter of the application must be useful. 
To be useful a device must be capable of construction, 
and must be operative, as also an art must be capable of 
being carried out and must produce the intended result. 
The subject matter must not be contrary to good morals 
or public policy. 

For any of these reasons the claims would be rejected 
for lack of utility. 

It is required of the applicant, (see Sec. 4888 R. S.), 
that he shall file in the Patent Office a written description 
of his invention or discovery and of the manner and pro- 
cess of making, constructing, compounding, and using it, 
in such full, clear, and concise, and exact terms as to en- 
able any person skilled in the art or science to which it 
appertains, or with which it is most nearly connected ; to 
make, construct, compound, and use the same; and in 
the case of a machine he shall explain the principle there- 
of, and the best mode in which he has contemplated ap- 
plying that principle, so as to distinguish it from other 
inventions. 

As this forms the consideration on tlie part of the in- 
ventor in return for which he receives protection, the 
examiner should be careful to see that the description is 
full, clear, and concise, and call upon the applicant for all 
necessary additions or amendments. 

Sec. 4888 E. S. also requires that the applicant shall 
particularly point out and distinctly claim the part, im- 
provement, or combination which he regards as his in- 
vention or discovery. 

The portion of the application in which he does this 
forms the claim or claims. This is the most important 
part of the application, as it is the definition of that for 
wliich protection is granted. 

There is no set form for claims, but in every i^articulai 
in which the claim fails to define correctly applicant's 



Journal of the Patent Office Society. 19 

invention, it should he clialleng^ed and the fault definitely 
pointed out. 

In the examination of applications of the same appli- 
cant for the same general subject matter, the examiner 
should note whether any of the applications are assigned. 
If so, he should proceed as set forth in ex parte Mc 
Laughlin, C. D., 1891, page 67. 

CLASSIFICATION. 

Before proceeding with the examination for novelty, 
some knowledge of the system of classification is neces- 
sary, though it is not advisable at this point to attempt 
to make a close study of that intricate subject. 

Pages 5-9 of the "Manual of Classification of Subjects 
of Invention of the U. S. Patent Office", (revised to 
Jan. 1, 1916), should be carefully read. If the examiner 
is to work on a reclassified class, the definitions of that 
class in the ''definitions of Eevised Classes and Sub- 
Classes of Subjects of Invention of the U. S. Patent Of- 
fice" should be studied. 

The division in which any class is examined may be 
ascertained by consulting the Manual of Classification, 
pages 16-18. 

The examiner will find that all patents previously is- 
sued are arranged in shoes bearing appropriate labels 
showing the class, sub-class, and probably the lowest and 
highest numbered patents put in the shoe. The patents, 
(the term used for convenience to signify copies of the 
specifications and drawings), should be arranged in nu- 
merical order. The importance of keeping every patent 
in its proper place cannot be overestimated. When pat- 
ents are taken out of the shoe cases in the course of the 
examination of an application, it is best to return them 
as soon as the examination of the application is finished, 
and this should be done by the examiner. He will find 
some copies marked ''cross reference". These are pat- 
ents which are classified in some other class but which 
have some relevance to the class in which the cross ref- 
erence is placed. If numerous, these should be kept in 
shoes used for cross references only, and so labeled. 

In the shoes are found, at the end of many classes, a 



20 Journal of the Patent Office Society. 

^'search card'^ with certain otlier classes or sub-classes 
thereon. These are to guide the examiner to other classes 
and sub-classes which may contain relevant matter, and 
he should search these additional classes in examining an 
application, if there appears to be any probability of 
finding matter bearing on the application in hand. This 
card is not, however, to be understood as limiting the 
examiner's search to the classes named. 

There are some publications kept in every division and 
the examiner should ascertain what they are and whether 
or not any of them are likely to bear on the class which 
is assigned to him. There is also a Scientific Library 
in the Office, with which he should acquaint himself suf- 
ficiently to know when it is likely to afford him assistance 
in his examination of an application. In this library 
may be found copies of foreign patents when the exam- 
iner is unable to find in its proper place one whose num- 
ber and date he knows. 

The English and the German Patent Offices publish 
^'Specification Abridgments ' ', and "Ausziige" respec- 
tively, of the patents issued by them and these are found 
in bound volumes in the library. 

The advantage of these bound volumes is that the 
abridgments and "ausziige'' are arranged in classes. 

The English abridgments are in the most accessible 
form in that all of a class for a given year are found in 
a single volume. The German ''ausziige" are in weekly 
installments. 

A pamphlet entitled ' ' Guide to the Search Department 
of the (English) Patent Office Library'', is published by 
the English Patent Office, and a copy is in the U. S. Pat- 
ent Office Library. Appendix I of this pamphlet con- 
sists of a concordance of English, United States, and 
German classes. The information therein is invaluable 
and should be used in the search for English, and Ger- 
man references. The examiner should have a typewritten 
copy of such parts thereof as relate to the class he exam- 
ines. A pamphlet entitled ''Alphabetical Index to the 
Classification of German Patents", and a set of German 
patents bound in classes, are also kept in the Scientific 
Library. Austria, Denmark, Holland, Hungary, Norway, 
and Sweden follow the German classification. 



Journal of the Patent Office Society. 21 

The dates of publication of foreign patents as relied 
upon to establish a prima facie case are : — 

AUSTRIA— ^'Ausgegeben^' date; 
CANADA- Date of grant; 
DENMARK— ''Udstedt" date; 
FRANCE—' ' Delivr e " da t e ; 
G-ERMANY— ^'Ausgegeben" date; 
GREAT BRITAIN— Date of acceptance of com- 
plete specification; 
HUNGARY— Date of Publication; 
ITALY— Not published since 1893; 
JAPAN — Date of publication; 
NETHERLANDS—' ' Dagteekening ' ' date ; 
NORWAY— ''Off entliggjort" date; 
RUSSIA — ^Large type at upper right hand corner; 
SWEDEN—' ' Offentliggjort ' ' date ; 
SAYITZERLAND-Consult Swiss Patent-List. 

The examiner may have patents come to his notice 
which have been wrongly classified. In such cases, No- 
tice dated Feb. 20, 1918, and Order No. 2207 are pertinent. 

Examiners shall not transfer official copies of specifi- 
cations and. drawings from one class or sub-class to an- 
other except with the approval of the Examiner of Clas- 
sification. 

A Law Library is also maintained in the Office where 
important publications on Patent Law are found. 
Volumes of the "Commissioner's Decisions" are found 
there and a set is kept in every division. These "Com- 
missioner's Decisions" contain not only the decisions of 
the Commissioner of Patents, but also those of the Courts 
in patent cases. Unpublished or "Manuscript" decisions 
of the Commissioner of Patents are found recorded in a 
set of volumes kept in the Docket Room. 

When an examiner desires to transfer domestic patents 
from one class or sub-class to another, he should list the 
patents on triplicate transfer blanks, (2-566), stating 
thereon what class and sub-class the patents are in, and 
the class and sub-class to which they are to be trans- 
ferred. This slip is forwarded with both examiner's and 
draftsman's copy of the patents to the Classification 



22 Journal of the Patent Office Society. 

Division. If approved, the class and sub-class on the pat- 
ents are corrected in all revised classes, the registers re- 
vised to agree with the new classification, and the copies 
of the patents sent respectively to the examiner's and 
attorney's rooms. 

If the patents transferred are placed in classes not yet 
revised, the correcting of the class and sub-class on the 
patents is done in the examiner's room. One page of the 
triplicate slip is sent by the Classification Division to the 
examiner to whom the patents are transferred, one to 
the Chief of the Publication Division to enable him to 
correct his records, and one is kept by the Classification 
Division. Where the transfer is from one division to 
another, the examiner should make a fourth cop}^ of the 
list to be forwarded to the Classification Division, and by 
them sent back to the division from which the patents 
were transferred. 

When it becomes necessary in the course of a transfer 
to remove draftsman's copies from the files in the attor- 
ney's rooms, a red dummy a little longer than the copy 
is substituted therefor, and the identification data of the 
patents withdrawn are written thereon. This dummy is 
corrected as the patents are returned and when all are 
returned the dummy is removed. 

If the entire sub-class is transferred, (see Order No. 
1996, July 24, 1912), in an unrevised class, the examiner 
is required to notify the Classification Division of the 
fact that the proposed transfer includes all patents there- 
in, in order that the sub-class in question may be official- 
ly abolished by the Commissioner, and its number and 
title removed from the Manual of Classification. 

The procedure with respect to the distribution and 
transfer of foreign patents is fully set forth in Order No. 
2207, June 23, 1915, which should be consulted. 

Complete copies of patents are exchanged with the fol- 
lowing countries: — Australia, Denmark, France, Great 
Britain, Holland^ India, Japan, Norway, Sweden, and 
Switzerland. 

War conditions interrupted exchanges with Germany, 
Austria, Hungary, and Russia. 

Briefs of patents are received from Belgium, and illus- 
trated briefs from Canada. Those from Canada are sent 
to the appropriate divisions where they are marked and 



I 
Journal of the Patent Office Society.; 23^ 

sent to the paste-room to be mounted, those not needed 
being discarded. 

The Italian Industrial Bulletin, which is received here, 
contains titles of inventions and names of inventors. The 
Italian Patent Office formerly sent copies of patents, but 
these are no longer published. 

An assistant examiner should be on the alert to note 
foreign patents which are exact duplicates of domestic 
patents, or duplicates of other foreign patents. Such 
duplicates must he thrown aside and not placed in the 
shoe cases, as they needlessly lengthen the search. In 
doing this, however, care should be taken to retain the 
patent having the earliest date. 

THE EXAMINATION FOR NOVELTY. 

" The examination for novelty must next be made; and 
turning to Section 4886, E. S., the conditions that nega- 
tive novelty are stated as follows: ''Known or used in 
this country before applicant's invention or discovery 
thereof; patented or described in any printed publication 
in this or any foreign country before his invention or dis- 
covery thereof^ or more than two years prior to his ap- 
plication; in public use or on sale in this country for more 
than two years prior to his application.'' 

It is the purpose of the examination for novelty to as- 
certain whether or not any one of these conditions exist. 
Any document or material thing establishing the exist- 
ence of any one of these conditions is called a "refer- 
ence". Where to search for these references has already 
been pointed out. (See pages 19, 20'). The data to be 
given in the Office letter is stated in Rule 66, Rules of 
Practice. In citing German patents, the class and sub- 
class according to the German classification should be 
added to this data. (See Commissioner's notice of Oct. 
5, 1915.) In citing foreign references give number of 
sheets of drawing, and designate the sheet or sheets re- 
ferred to. For the procedure in division and election of 
species, see page 42 post; see also Rule 75. 

Before beginning the search, the examiner should 
thoroughly digest the subject matter of the application,, 
and of the claim or claims. He should endeavor to fix 



24 Journal of the Patent Office Society. 

in his mind as clear a conception as is possible, of the 
means which the applicant is attempting to claim. 

The search should then he directed to that means. As 
Rule 66 requires the examiner to cite tlie best references 
at his command, he should not desist from his search 
merely because he has found references that meet the 
claims presented, but should persist until he has discov- 
ered the reference that is nearest to the particular means 
disclosed. Where a means within the definition of the 
claim is not found, but, in the course of the search, a 
reference is found which would meet it if more broadly 
expressed, attention should be called to such reference in 
order to apprise the applicant of the precise scope of pro- 
tection the prior available art permits. 

When searching a broad claim the examiner should 
banish from his mind the particular construction shown, 
and attempt to visualize other forms to which the terms 
of the claim may apply, and thus be able to recognize the 
indefinite nature of a claim which, when read with tlie 
particular structure in mind that has been illustrated in 
the application, seems to be definite and allowable. 

If the examiner while searching in divisions other than 
his own, finds a domestic patent he wishes to use he will 
take note of the data thereon, (class and sub-class, num- 
ber, date, name, and title), but copies of patents should 
never be taken from one division to another. On his re- 
turn to his division he will obtain an order blank, (No. 
2-607), and fill it out with the number of the patent, and 
put it in the place designated in his division for it. Mes- 
senger boys come by at regular intervals to take up these 
orders. They '^pulP' the copies from the files kept by 
the Office, and return the blank with a copy of the patent 
attached. In emergency cases the orders may be sent at 
once to the Chief of Division F who will approve them 
and permit the bearer to present them to the copy pullers 
assigned to the territory where the copies are stored for 
immediate execution by the latter. 

Only those assigned to Division F have access to the 
files of printed copies of patents. (See Order No. 2528'^'2, 
June 11, 1920). Copies of patents retail at ten cents a 
copy and economy should be exercised in tlieir use. It is 
advisable to place in the application file any copies or- 



Journal op the Patent Office Society. 25 

dered for it. This will avoid a duplicate order when the 
application is amended. 

If the examiner finds a foreign patent in a division 
other than his own, he may write out his deductions con- 
cerning it on the s^ot; he may take the data and look at 
the patent in the library; or he may borrow it, leaving' a 
chaxge therefor with the clerk of that division. If he 
thinks that the foreign patent would be of frequent use to 
him in his own class, he may obtain a photo-lithographic 
copy of both specification and drawing by filling out a re- 
quest therefor on a blank, (No. 2-247), obtainable from 
the clerk of his division, and having the principal sign 
it before sending it out. The request is put in a box he 
will find in his division marked "Division E", and the 
copy will be delivered in the course of a few days. 

For the classification of a domestic patent not stamped 
on the copy at hand the Classification Division should be 
consulted. 

Foreign patents are arranged ver^^ differently in the 
various divisions of the Office. Whatever the arrange- 
ment in his division, the examiner should be sure to refer 
to the specification for every feature in the drawing he 
does not thoroughly understand. 

In the treatment of an application it is sometimes 
necessary to inspect the application papers of some prev- 
iously granted patent. These may be obtained in the 
Record Room by filling out slips (Form No. 2-126, or 2- 
125, according to whether or not the papers are to be 
taken from the room) found there, with the necessary 
data and giving them to the clerk in charge. The appli- 
cation papers are drawn from the shelves and distributed, 
the slip being retained by the clerk as a charge. The ap- 
plication papers should be promptly returned when the 
examiner has finished with them. 

The data of a patent are sometimes accessible but no 
copy of the patent convenient. When this is the case the 
examiner can find the patent in the bound volumes of 
all patents granted, kept in the Record Room. 

While the search will sometimes carry the examiner 
into other divisions, he must remember that examiners 
are permitted to enter another division only when some 
member of that division is present. The examiner will 



26 Journal of the Patent Office Society. 

examine the shoes designated in that division just as he 
examines his own. 

When there are found in an application in which divis- 
ion would not be required, claims, the references for 
which must be sought entirely in another division, the 
examiner may write a letter to the primary examiner of 
the other division requesting a search on such claim or 
claims. This letter is forwarded with the file and draw- 
ings to the other division in which the search is to be 
made; and, following the search, the papers are returned 
with a report thereon. 

The search having been made, the examiner will make 
:an indorsement on the left hand page of the open file 
w^rapper, stating the classes and sub-classes of domestic 
and foreign patents, and the publications in which search 
for references has been made, and also the date of the 
search. 

EXAMINER'S LETTER. 

Before writing his first letter the examiner should ex- 
amine the blank form, (2-260), on which letters are type- 
written. 

The objections to the specification and claims should 
be pointed out with exactness, and the page and line, or 
claim and line stated. Everything of a personal nature 
must be avoided as also must everything which would 
cast a shadow on the patent if granted, as, for example, 
a statement that ''every doubt has been resolved in favor 
of the applicant in granting him the claims allowed". If 
the attorney is discourteous in the remarks or arguments 
of his amendment, either ignore it entirely or submit the 
paper to the Commissioner to be returned. (See Eule 
22a). 

In rejecting a claim, use the term ''reject''. The ref- 
erence, if not perfectly obvious to one skilled in the art, 
should be applied by showing what elements of the ref- 
erence answer to the various elements of the claim. If 
more than one reference is used against a claim, state 
clearly what element or elements of the one are combined 
with, or substituted for, designated elements of the other. 
State clearly whether the elements of the reference meet 
the elements in fact and in terms, or whether thev are 



Journal of the Patent Office Society. 27 

considered as equivalents. (For data of patents to be 
given in the Office letter, see Rule 66, Rules of Practice 
and page 23 ante. Care must be taken to cite a reissue 
as such). 

Mention each claim in the letter. If the claim is ob- 
jectionable in form, but the subject matter is allowable, 
the latter fact should be stated after the objections have 
been pointed out. Claims neither objected to nor re- 
jected should be stated to be allowable. 

Before or after writing the rough draft of the letter the 
application must be submitted to the Primary Examiner. 
The assistant examiner should understand thoroughly 
every point brought out in the application and he should 
have a complete knowledge of each reference he pur- 
poses to submit to the Primary Examiner before report- 
ing the case. Otherwise there is a great waste of time 
in going over the case. 

The Primary Examiner having approved the rough 
draft it is attached to the file and placed on the copyist's 
desk. She then copies the letter on the proper forms, 
inserting in the proper place the address of applicant 
or attorney and the identification data of the application, 
leaving a wide margin on the left hand side of the page 
(see Chief Clerk's notice, May 18, 1920). See that all 
letters in amended case begin with ''In response to 
amended case begin with "In response to amendment 

(or letter) filed ." (Griving date of the amendment). 

A carbon copy is also made. The original copy, together 
with the rough draft, is then put on the assistant exam- 
iner's desk, who will compare the copy with the rough 
draft, paying particular attention to the data of the 
references. If any corrections are to be made, he will 
note them in lead pencil and return the copy to the copy- 
ist, who will make the corrections both in the original 
copy and carbon, and give the original copy to the assist- 
ant examiner. When the corrections have been properly 
made, or when there are no corrections required, the as- 
sistant examiner will initial the original copy and return 
the same to the Primary Examiner for his signature. The 
assistant examiner should see to it that all of the refer- 
ences are returned to their proper places before taking up 
a new case. 

The copyist, having taken the original copies from the 



28 Journal of the Patent Office Society. 

Primary Examiner ^s desk, and having- seen that all of 
them are signed, places them in the file wrapiDers on the 
right hand side, and enters in black on the outsides of 
the wrappers, under "Contents", the character of the 
action. If any claim has been rejected, the word ''Re- 
jection'' is entered on the file; otherwise the word "Let- 
ter" is used. A requirement for division is also noted. 
Errors will be avoided if the examiner enters the charac- 
ter of the action on the file in lead pencil before giving 
the file and rough draft to the copyist. The papers are 
numbered, and as the application papers are considered 
No. 1, the first Office letter is almost invariably No. 2. 
The copyist also mails the carbon copy to the proper ad- 
dress. 

The file is then given to the clerk, who enters the char- 
acter of the action, and the date thereof, in the " Regis- 
ter of Pending Applications", after which the file is re- 
turned to the file case along with other cases awaiting 
action by the applicants. The cases awaiting action are 
filed in numerical order according to their serial num- 
bers, in order that they may be readily available. 

Letters are sometimes returned to the Office because the 
Post Office has not been able to deliver them. 

The examiner should use every means to ascertain the 
correct address and forward the letter again after redi- 
recting it. An office letter should be added stating that 
the original letter has been mailed and returned. A copy 
of this second letter should be placed in the file, and the 
year running against the application begins with the 
latter date. 

If the Office is not finally successful in delivering the 
letter, it is placed, with the envelope, in the application 
which is filed away in the pending files. 

In case a notice of allowance is returned a new notice 
is sent, and the file is obtained from the Issue and Gazette 
Division, and the date of sending the notice corrected. 

AMENDMENTS AND AMENDED APPLICATIONS, 

(Rules 68-78). 

As the specification is never returned to applicant un- 
der any circumstances, he usually retains a line for line 



Journal of the Patent Office Society. 29 

copy thereof. In amending, the attorney or the applicant 
requests insertions, erasures, or alterations, giving the 
page and the line. The amendments reach the Office by 
mail, or they may be deposited in the Application Eoom, 
or in a box at the main entrance to the Patent Office. A 
date of receipt is stamped on all amendments and other 
communications. The mail clerk of the. Patent Office 
sends to the Post Office for all mail at the close of Office 
hours. This is brought to the Patent Office, and stamped 
as of that day. (See Rule 12). Ordinary mail arriving 
at the Post Office thereafter will not be received at the 
Patent Office until the next day. The box at the main en- 
trance is left open until twelve o'clock at night, when it 
is closed by the watchman. The key is held by the mail 
clerk, and he has the box opened at nine o'clock in the 
morning, and the contents stamped as received the pre- 
ceding day. All telegrams and special delivery letters re- 
ceived after Office hours are deposited in this box. On 
Sundays and holidays, telegrams and special delivery let- 
ters, this box being closed^ may be deposited with the 
watchman, who stamps them with the date of the day re- 
ceived. If that date is a holiday, the mail clerk gives the 
amendment the same Office date stamp, but if that date 
is on Sunday, the mail clerk gives the amendment the 
date of the following Monday. The matter of the date 
is of importance in connection with the question of aban- 
donment. (See Rules 31, 77, and 171). 

When the amendments reach the Application Clerk, he 
assorts them according to the division to which they be- 
long, and each morning sends them, together with such 
new applications as have been received, to the proper 
division. Upon receiving the amendments, the Primary 
Examiner makes an inspection thereof, and turns them 
over to the clerk, whose duty it is to enter the amend- 
ments. The clerk stamps the amendment with the date 
of its reception in the division. It is important for the 
assistant examiner to carefully observe the distinction 
which exists between the stamp which shows the date of 
reception of the amendment in the division, and the 
stamp bearing the date of receipt of the amendment by 
the Office. The latter date should always be referred to 
in writing to the applicant with regard to his amend- 
ment. 



30 Journal of the Patent Office Soci-ety. 

The clerk will not enter the amendment: 1. If it is 
not properly signed by a person having authority to 
prosecute the case; 2. If it is made after a final rejection 
and consists of more than a cancellation of the rejected 
claims; (the latter is entered, however, if it places the 
application in condition for allowance); 3. If it re- 
quests the substitution of an entire specification; 4. If 
it is received in the Patent Office after the expiration of 
the year allowed applicant in which to amend; 5. If it 
is so worded that it cannot be entered with positive ac- 
curacy; 6. If it cancels all of the claims without sub- 
stituting new claims ; 7. If the application to be amend- 
ed is not within the Primary Examiner's jurisdiction. 

When a telegraphic amendment is received it is placed 
in the file, and applicant notified to ratify it by a prop- 
erl}^ signed amendment. If he fails to do so, the tele- 
gram is not considered as in any way a response to any 
former Office action. If he does ratify promptly, the 
amendment mav be entered. See ex parte Whearv, 197, 
0. G., 534. 

If an amendment in other than permant ink is filed, it 
is entered, but a permanent copy is required to be filed. 

All amended cases when put on the assistant exam- 
iner's desk should be inspected at once to see if the 
amendment was received in the Office, (not date received 
in the division), within the year allowed by law for re- 
sponsive action, and also to determine whether or not 
the amendment is apparently completely responsive. Note 
that this year includes the corresponding date of the suc- 
ceeding year; i.e., if the Office letter was mailed March 
20, 1918, a reply received March 20, 1919, is within the 
year. 

If the amendment was received after the expiration of 
the year, the examiner should obtain from the Mail Eoom, 
and place in the file, the envelope in which the amend- 
ment was received. ('See notice of Nov. 18, 1916.) He 
should notify the applicant or attorney at once that the 
application has become abandoned. The amendment is 
indorsed on the file wrapper but not formally entered. 
(See order No. 1854, May 10, 1910.) § See Notice of 
June 18, 1920, which is as follows: 



Journal of the Patent Office Society. 31 

"Where an amendment is filed after the expiration of the 
year, accompanied by a statement ae to the reasons for delay, 
that statement should be forwarded to the Commissioner as a 
petition to revive, even though not so entitled." 



and see post page 40. 

Amendments are sometimes received in a division to 
which they do not properly belong. If it is not clear to 
what division the amendment should have gone, the in- 
formation may be obtained from the Application Clerk, 
and the amendment should be forwarded at once to the 
proper division. 

To return it to the Application Room, to be sent to the 
proper division, leads to unnecessary delay. Such delay 
may have serious consequences, especially if the amend- 
ment was received toward the end of the year allowed 
applicant for action on the case. 

This general policy should be carried out with all pa- 
pers received in a division, which do not belong to that 
division. 

If an amendment is not a complete response to the 
previous Office action, the attorney should be notified 
that the amendment has not been entered for that reason, 
and the statement added that the year running against 
the application dates from the previous Office action, be- 
ing careful to include said date. This statement should 
be emphasized by writing it wholly in capital letters, or 
by underlining. The examiner should not fail to con- 
sult Order No. 1961, Mar. 1, 1912,. in this connection. If 
the incompletely responsive amendment belongs to an ap- 
plication coming under Commissioner's Order No. 2210, 
and insufficient time remains to complete the response, 
the case is referred at once to the Law Examiner. 

If an amendment is signed by an attorney whose power 
is not of record, he, as well as the aT3plicant, should be 
notified that the amendment cannot be entered. 

If an amendment signed by the applicant is received in 
an application in which there is a duly appointed attor- 
ney, the amendment should be entered and acted upon. 
Attention should be called to Rule 7, and a copy of the 
letter should be n^ailed to the applicant, as well as to 
the attorney. 

Where a power of attorney is given to a firm stated 



32 Journal of the Patent Office Society. 

to consist of certain members, an amendment signed witli 
the name of one of tlie members is not entered, but is re- 
garded as an improperly signed amendment. 

Where the power is given to several individuals by 
name, and they are stated to constitute a firm whose title 
is given, an amendment signed with the name of any one 
of the individuals or of the firm is regarded as properly 
signed. 

In the case of unsigned or improperly signed amend- 
ments, the amendment should be returned for signature, 
except in those cases where, because of the impending 
expiration of the statutory year, insufficient time remains 
for the return of such amendment. In such case the ex- 
aminer will endorse such informal amendment on the file 
wrapper and notify the applicant of the status of the 
case. (See Order No. 1961, above alluded to). 

An amendment signed by an assistant in the Office of 
the attorney, the latter having died, may, with the ap- 
proval of the Commissioner, be admitted, subject to fu- 
ture ratification. 

When for any reason an amendment is to be returned, 
sufficient time remaining therefor, before the expiration 
of the statutory year, it will be forwarded to the Chief 
Clerk with a memorandum giving the name and address 
of the attorney, the date of the last Office action in the 
case, and a statement as to why the paper is. to be re- 
turned. The Chief Clerk will cancel the impression of 
the receiving stamps and conduct the correspondence in- 
cident to the return of the papers. 

If the clerk inadvertently enters the amendment when 
it should not have been entered, such entry is of no effect, 
and the same action is taken as if the changes had not 
been actually made, inasmuch as they have not been leg- 
ally made. The proper endorsement on the file wrapper 
is then ^'Proposed Amendment". 

Those amendments that are not open to any of the 
above objections are entered by the clerk according to 
the instructions given in Order No. 1733, July 19, 1907, 
which should be thoroughly familiar to the examiner. 

Many attorneys have offices or representatives in Wash- 
ington and it sometimes expedites business to interview 
them concerning an application. When the examiner 
believes the progress of the application would be ad- 



Jour:n^al of the Patent Office Society. 33 

vanced thereby, he should call up the attorney in the case 
by telephone and ask him to come to the Office, giving 
him the room number, and the data of the case. The ex- 
aminer may also reach the attorney by telephoning to the 
record room, where at the examiner's request, a notice 
will be posted asking the attorney to call. 

The amendment or letter is placed in the file, given its 
number as a paper in the application, and its character 
endorsed on the file wrapper in red ink. The application 
is now "up for action", and it is very important that it 
should be kept separate from those applications which 
await action by the applicant. It is placed on the exam- 
iner 's desk, and he is responsible for its proper disposal. 
When reached in regular order the application is re-ex- 
amined. (See Rules 65 and 67). 

In this re-examination, attention must be paid to new 
matter. Applicant is not allowed to introduce into the 
application any matter by amendment not disclosed in 
the application as originally filed, and if this is done by 
amendment, he must be required to cancel such matter. 
The examiner should note that this applies to what are 
called preliminary amendments; that is, amendments 
filed prior to an Office action on the case, even if such 
amendment be filed on the same day as the application. 
Amendments to the drawing held by the examiner to con- 
tain new matter are not entered until the question of new 
matter is settled. 

The examiner should first note whether the character 
of the amendment is such as to entitle applicant to the 
re-examination provided for by the statutes, (See Rule 
69). If not, he should inform the attorney that the 
amendment has not been entered, and the reason why. 
He should state at the end of his letter that the year 

running against the application dates from , 

(giving the date of the preceding Office action). This 
notice should be typewritten in some noticeable manner, 
as has heretofore been suggested. 

When an amendment to an application in interference 
is filed, the procedure is as set forth in Order No. 1759, 
April 17, 1908. (See page 50; post). 

After re-examination and reconsideration, the examiner 
writes the applicant his conclusions, and the prosecution 
of the application is thus continued until the application 



34 Journal of the Patent Office Society. 

is in condition for allowance, or until either some or all 
of the claims are finally rejected. There may also be some 
formal matter on which the examiner and attorney can- 
not agree. In the latter case, applicant may petition the 
Commissioner, while in the case of a final rejection of the 
claims, he may appeal to the Board of Examiners-in- 
Chief. (See Rules 133-142.) 

When the application is apparently ready for allow- 
ance, the examiner makes an ^'interference search''. To 
do this, he inspects all the pending drawings in the^ class 
and sub-class in which the application is classified, and 
all other classes which he has found it expedient to search 
for references, whether in his division or elsewhere, in 
order to ascertain whether other applicants may not be 
claiming substantially the same subject-matter he is al- 
lowing. When the drawings show such a condition to be 
likely, he examines the corresponding file. The procedure 
in case the examiner concludes that an interference in 
fact exists is set forth in a subsequent section. 

It should be noted that the examiner should be on the 
watch for indications of interfering claims throughout 
the examination of a case, and make a record of the 
same. This record, if made on the drawings, must not 
be such as to give any hint to the applicant, who may in- 
spect the drawings at any time, of the date or identity 
of the supposedly interfering applications. 

ALLOWANCE. 

If no interfering application is found, the examiner 
should prepare the case for issue. If the application in 
question is in a revised class, he will first fill out the 
blue slip, (Form 2-574), with the exception, of course, 
of the patent number, and pin it to the upper left hand 
corner of the drawing, being careful to insert the pin 
outside of the margin line. In order that the revised 
classification of patents may be maintained in an up-to- 
date condition, the assistant examiners must be the main 
reliance of the Office in the constant exercise of team- 
work and cooperation with other divisions of the Office 
to attain that end. In filling out the blue slip for his 
own class, the assistant examiner should call the atten- 
tion of tile ]>roper principal examiner or the examiner of 



I 



JOUBNAL OF THE PaTENT OfFICE SoCIETY. 35 

classification to such other class or classes in which cross- 
references might he essential. After the substantial ne- 
cessity for such cross-reference has been determined, it 
should be noted on the blue slip. On the upper left 
hand margin of the sheet of drawing the examiner places 
the following '' (O.G.Fig. . . . ) ", indicating by numeral 
the figure which has been selected for illustration in the 
Official Gazette. (See description of this publication 
under ''Official Gazette'', page 51). There should also 
be indicated on the lower right hand margin the number 
of figures on the drawing. On the lower margin of the 
drawing the examiner will write the allowance mark 

and the date allowed, thus: " , ", (inserting 

date where dashes are). He will also fill out the form at 
the bottom of the face of the file wrapper. The number 
of claims to be printed is subject to change, but one claim 
being printed as a rule, at present, 1920. This applies to 
reissue cases also. 

The blue slip is not used in unrevised classes, otherwise 
the procedure is the same. 

The application should be carefully inspected with 
Order No. 2438, Nov. 18, 1918, in view. * While this order 
directs the primary examiner to have the clerk revise the 
entire application, it is evident that it is primarily the 
duty of the assistant examiner to see that the application 
is in every way in condition for allowance before he 
places it on the clerk's desk for revision by her. 

In so revising the application, and in subsequent re- 
vision and proof reading in the Issue and Gazette Divis- 
ion and in the Printing Office, minor informalities are 
sometimes found which must be corrected, but which are 
not sufficiently important to warrant a continuance of the 
prosecution of the case before the examiner. These may 
i3e corrected by examiner's amendment, (See Order No. 
2308, Mar. 12/1917.) This amendment is made out on 
Form 2-254, and a copy is sent to the applicant. Where 
the correction is made in an application already in the 
printer's hands, or where it is trivial, as the misspelling 
of a word, it appears needless to send a copy to the appli- 
cant, and it is not done, the paragraph in the form con- 
cerning the applicant being canceled. 

The file wrapper bears on the left hand margin the 
legend: ''Division of Application No , Filed , 



36 Journal of the Patent Office Society. 

19. . /'. This is to be filled out with the serial number 
and date of any prior application of which the one in 
question is a division or continuation. But such is not 
the case if the application under consideration contains 
any matter additional to that contained in the prior ap- 
plication or if the prior application was at no time co- 
pending. In connection with this matter, see Order No. 
2071, Sept. 19, 1913. 

Where an application is a substantial duplicate, con- 
taining- no additional matter, of one previously filed and 
abandoned, it should be endorsed on the file jacket as 
follows: "Eefiled for (abandoned) application filed. . . ., 
Ser. No.......';. 

The application is signed by the Primary Examiner 
after revision by the clerk under Order No. 2438, if no 
informalities are found. The clerk then enters in her 
register the date of allowance and gives the file to the 
copyist, while the drawings are placed in the appropriate 
drawer of issue drawings. The copyist fills out the no- 
tice of allowance, (Form 2-171 or 2-182, according to 
whether the final fee has been paid or not; or Form 2-184, 
in the case of a reissue application), places the original 
in the file and mails a carbon cop}^ thereof to the appli- 
cant or his attorney. The name of the applicant, which 
must be typewritten in the upper left hand portion of the 
form, is followed, where there is an assignment, in this 
notice of allowance, by a comma followed by the expres- 
sion '^Assor. etc.'\ This shows that the patent will is- 
sue to the assignee. (See Chief Clerk's circular of Nov. 
22, 1918.) The application is finally placed in the ''Is- 
sue Box", and a messenger takes it to the Issue and Ga- 
zette Division. The application has then passed out of 
the jurisdiction of the Primary Examiner. 

For procedure when notice of allowance is returned see 
page 28 ante. 

In this connection the following order, (Order No. 1838, 
Jan. 13, 1910), is pertinent: — 

"Whenever because of the death of an inventor the right 
of applying for and obtaining a patent for an invention devolves 
upon an executor of administrator, or whenever an executor 
or administrator desires to intervene prior to the granting of 
the patent, proof of the authority of such executor or adminis- 
i trator should in all cases be made of record in the assignment 



Journal of the Patent Office Society. 37 

records of this Office by recording a certificate of the clerk of 
a competent court or of the register of wills that said executor 
or adminstrator has been appointed and that his appointment 
is still in full force and effect. Such certificate should be signed 
by an officer and authenticated by the seal of the court by which 
the same is issued." 

"Should said certificate of appointment be found to be in- 
sufficient for any reason, there may be required to be recorded 
a certified and properly authenticated copy of the letters tes- 
tamentary or of the letters of administration, in order that the 
scope of authority of the persons who seek to intervene may be 
a matter of record in this Office." 

"In order to insure the proper issuance of patents and in the 
interest of uniformity of practice, it is hereby directed that 
all applications filed by an executor or administrator or in 
which an executor or administrator has intervened or in which 
the death of the inventor h^s been suggested, be referred to the 
Assignment Division to ascertain whether proper authority is 
of record, and for suitable endorsement on the file before pass- 
ing the case to issue. * * * in any case in which the Chief 
of the Assignment Division reports that the authority of the 
executor or administrator of record in the case is insufficient, 
the examiner will require the recording in the Assignment 
Division of a certificate of such appointment or a certified copy 
of a letter testamentary or of letters of administration in such 
case before finally passing the .case to issue." 

"It is further ordered that before passing a reissue applica- 
tion to issue the file be forwarded to the Assignment Division 
in order that the abstract of title forming part of the file record 
may be brought down to the latest date so that the examiner 
may ascertain therefrom whether the chain of title in the same 
is complete and to insure the granting of the reissue to the 
legal owner as required by section 4916 of the Revised Statutes. 
This order will apply also to cases of insane persons arising 
under section 4896, R. S." 



The portion of the Order omitted ahove has been over- 
ruled by Order No. 2076, Oct. 14, 1913, which reads as 
follows : 



"Where an inventor dies after filing an application, the exe- 
cutor or administrator should intervene, but the allowance of 
the application will not be withheld nor the application with- 
■ drawn from issue if the executor or administrator does not in- 
tervene." 

CROSS-REFERENCES. 

The blue slip referred to on a preceding page is used 
to indicate where cross-references are needed in revised 
classes. The cross-references so indicated will be mount- 



38 Journal of the Patent Office Society. 

ed, stamped, and sent to the examining division by the 
Classification Division. 

To keep up the cross-references in unrevised classes, 
the examiner should look over the Official Gazette each 
week, and if an}^ patents are found which he wishes to 
cross-reference to sluj of his classes, he will order a suf- 
ficient number of copies on Form 2-607 to make a com- 
plete copy when mounted, and send them to the paste 
room, to be mounted. They will be mounted on stiff 
cardboard and returned to the division. The clerk of 
the division has the stamps for the unrevised classes, and 
will stamp them properly. They are then put in the 
proper shoes. 

ACTION AFTER ALLOWANCE. 

If a reference is found for an allowed claim in an ap- 
plication which has gone to issue, the Primary Examiner 
writes a letter to the Commissioner requesting that the 
application be withdrawn from issue for the purpose of 
applying the new reference. Upon the approval of this 
letter by the Commissioner, it is taken to the Issue and 
Gazette Division and the application is withdrawn from 
their files and stamped ^'Withdrawn'' over the allow- 
ance signature of the Primary Examiner. It is then re- 
turned to the division from which it came, the clerk en- 
ters the withdrawal from issue on her register, and the 
application returns to its former status as a pending ap- 
plication. The examiner takes up the application at once 
and writes a letter stating that the application has been 
withdrawn from issue, and citing the new reference or 
references against the claim or claims believed to be met 
thereby. 

AMENDMENT AFTER ALLOWANCE. 

When an amendment is filed in the Office prior to the 
mailing of the notice of allowance of the application to 
which it is directed, but reaches the division that allowed 
the application after the mailing of said notice, the 
amendment must be entered. If the character of the 



Journal of the Patent Office Society. 39 

amendmeiit is such as to re-open the prosecution, the ap- 
plication must be withdrawn from issue, see above. Other- 
wise the amendment is entered under Rule 78 with the 
written approval of the Commissioner. (See ex parte 
Law^C. D., 1904, page 292.) 

An amendment received in the Office after the mailing* 
of the notice of allowance should be accompanied by a 
petition under Rule 78, see page 48. 

PETITIONS AND APPEALS, (Rules 78-171). 

When petitions or appeals are received in the Patent 
Office they are forwarded to the Docket Clerk who sends 
for the file. In the case of a petition he enters the pe- 
tition and forwards the file to the proper Law Examiner 
or to the Primary Examiner. It is forwarded to the Pri- 
mary Examiner in case a statement is required from him 
and an order for such statement is attached to the file. 
The Examiner ^answers the petition and returns the file 
with his statement attached, to the Docket Clerk, who for- 
wards it to the Commissioner after making a memoran- 
dum thereof- If the Examiner recommends adversely he 
also mails a copy of his answer to the applicant. Pe- 
titions are usually decided without oral hearing, but if 
such hearing is deemed necessary, a day is set and notices 
sent by the Docket Clerk. After the decision of the Com- 
missioner, the petition is returned to the Docket Clerk 
who makes a record of the same and forwards the file 
to the Primary Examiner who will act in accordance with 
the decision. 

PETITION UNDER RULE 78. 

If the amendments proposed in a petition under Rule 
78 are of a merely formal nature the petition is answered 
by a set form for which a stamp is found in every division. 
If the amendment goes to the merits and the Examiner 
does not believe the proposed amended claims patentable 
he is not required to make a re-examination but recom- 
mends adversely and states tliat a re-examination would 
be necessary if the amendment were admitted. As stated 
elsewhere, a copy of the recommendation must then be 
sent applicant, and the words ^'Copy sent" typed on the 



40 Journal of the Patent Office Society. 

original. If the amendment broadens the claims but the 
Examiner considers them patentable, he states these 
facts and recommends favorably. In this case no copy 
is sent to the petitioner. The Examiner should akvays 
state in his recommendation whether or not the final fee 
has been paid. 

PETITION TO REVIVE. 

In answering a petition to revive an abandoned appli- 
cation the Examiner should state the date when the ap- 
plication became abandoned, whether the amendment, if 
any, is responsive, and if not, in what respect it is defec- 
tive, and whether it puts the application in condition for 
allowance. If no amendment is filed, or if the petition 
is not verified, the answer should so state. Attention 
should be called to the record so far as pertinent to the 
question of revival, but no recommendation should be 
made. A copy of the answer should be sent the petitioner. 
(See also notice of June 18, 1920, p. 31 ante). 

APPEALS. 

In the case of appeals, the Docket Clerk sees that the 
appeal fee has been properly applied, enters the appeal 
on the file and in the record of appeals, and forwards the 
file, with appeal attached, to the Examiner for answer to 
the appeal. On receiving the appeal, the Examiner or- 
ders three photographic copies of the drawings, and 
answers the appeal, copving in his statement all appealed 
claims. (SeeOrder No. 1856, Mayl2, 1910.) He will re- 
cite in his statement all references on which he relies to 
support the actions from which appeal is taken, but no 
others. (See Order No. 2070, Sept. 16, 1913.) If he has 
found a reference not in the record of the case, but which 
he believes should be considered on appeal, he will cite 
such reference on the authorit}^ of ex parte Mevey, 56 0. 
G., 805, which outlines the further procedure in such a 
case. The date of the appeal and the answer thereto 
are entered in the clerk's register, and the file, with the 
Examiner's answer and the photographic copies entered 
therein, is forwarded to the Docket Clerk, who, if he finds 



Journal of the Patent Office Society. 41 

the file complete, forwards it with copies of the references 
cited, to the Board of Examiners-in-Cliief, who set the 
case for hearing. 

After the case has been decided by the Examiners-in- 
Chief, the file, with their decision, is returned to the 
Docket Clerk, who notes the decision on the file and in the 
record of ex parte appeals, and forwards it to the Primary 
Examiner. The Primary Examiner then takes the proper 
action to carry into effect the decision. 

If the applicant appeals to the Commissioner from the 
decision of the Examiners-in-Chief, the appeal is sent to 
the Docket Clerk, who notes the date of the appeal on the 
file, and record is made thereof. The Docket Clerk checks 
up the copies of the references, sets the day of the hear- 
ing, and sends out notices of the day set. The file is re- 
tained by the Docket Clerk until the day of hearing. When 
decided by the Commissioner, the file is returned to the 
Docket Clerk, who notes the decision on the file and in the 
record of appeals. The decision is then recorded in full 
as is done in all decisions of the Commissioner on ap- 
peal. The file is afterwards forwarded to the Primary 
Examiner for proper action. 

Inter partes appeals, (interference), are treated in sub- 
stantially the same manner. 

Cases wherein appeal lies to the Court of Appeals of 
the District of Columbia, are held by the Docket Clerk 
after the decision of the Commissioner, until the expira- 
tion of the time -allowed for appeal when the files are re- 
turned to the Primary Examiner if no appeal has been 
taken. 

If appeal to the Court is taken, the Docket Clerk selects 
those papers which should form the transcript record, no- 
tifies appellant of the papers selected, and forwards a list 
of the references to the Manuscript Division. The court, 
having decided the case, forwards the decision to the 
Commissioner of Patents and it is sent to the Docket 
Clerk, who enters the decision and makes a copy for pub- 
lication in the Official GTazette. The file goes back to the 
Primary Examiner for proper action. 

Carbon copies of all '^Examiner's statements'' in an- 
swer to appeals, and of all answers to petitions in which 
a copy is mailed to the petitioner, and also of the letter 



42 JOUKNAL OF THE PaTENT OfFICE SoCIETY. 

written to the Examiner of Interferences in each interfer- 
ence, are kept on file in each division. 

A record of all cases on appeal or involved in interfer- 
ence should be kept and the decision noted when it be- 
comes final, so that the applications out of the division 
for these purposes may be found at once. 

DIVISION AND ELECTION OF SPECIES. 

Rules 41-44 refer to applications in which more than 
one invention is claimed in an application. In the appli- 
cation of these rules, the examiner is referred to ex parte 
Eagle, 1870, C. D., 9. When the examiner finds it neces- 
sary to make a requirement of division, or to call for elec- 
tion of species, he does not make a thorough examination 
of the art of the different inventions, but merely cites the 
best references he is aware of, or which a cursory search 
of the art reveals, such references being cited to aid the 
applicant in making his choice. In either case, the claims 
are rejected in view of the requirement of division or elec- 
tion of species. If applicant refuses to divide or to elect 
a single species, as the case may be, and the examiner re- 
tains the opinion that such action should be taken, the 
case is referred to the proper Law Examiner under Order 
No. 2215, Aug. 15, 1915. In such case, he writes a letter 
to the Law Examiner stating the facts of the case, and 
forwards the file, with the letter attached, to the Law 
Examiner. The Law Examiner renders a written decision, 
approving, disapproving, or modifying the examiner's ac- 
tion, and, the examiner acts in accordance therewith. 

In connection with this question, ex parte King, C. D., 
1913, 105, should be studied. If applicant retains claims 
under ex parte King, he should be required to give his 
reasons for non-compliance, and a final requirement of 
division should be entered with the approval of the Law 
Examiner. 

If after canceling claims to one invention, or to one 
specific modification, applicant in a later amendment in- 
serts a claim to such invention or specific modification^ 
the claim is not to be rejected, but the examiner requires 
that it be canceled. Should applicant refuse to do so, 
the case is referred to the Law Examiner as coming under 
Order No. 2215 referred to above. 



1 



' Journal of the Patent Office Society, 43 

SPECIAL CASES. 

Cases having an effective filing date running more than 
three years are made special and are referred to a Law 
Examiner. See Order No. 2210, by June 28, 1915, and ad- 
ditional notice relative thereto, by former Assistant Com- 
missioner Clay, Jan. 4, 1916, for procedure. 

FORFEITED APPLICATIONS. 

When the file of an allowed application is forwarded to 
the Issue Division, it is placed in the file cases of that 
division. If the final fee, (see Rules 167-174), is not paid 
within six months from the date of the notice of allow- 
ance, the file is withdrawn, and returned to the examin- 
ing division. The clerk of the examining division takes 
out the drawings, stamps them '' Forfeited'', stamps the 
files likewise, makes the proper entiy in the register, and 
forwards the file and drawing to Division E, (Abandoned 
Files), where they are recorded as forfeited applications 
and filed away. 

ABANDONED APPLICATIONS. 

At the expiration of each quarter the Primary Exam- 
iner has an examination made of the files in his division, 
to ascertain what applications have become abandoned 
through failure to prosecute the same within one year 
after the date when the last official action was made by 
the Office. 

These applications are withdrawn from the files, the 
drawings assembled therewith, and the files and drawings 
stamped ' ' Abandoned ' \ The proper entry is made on the 
'^ Register of Pending Applications", and the files and 
drawings are forwarded to Division E, (Abandoned 
Files). 

The Primary Examiner makes a report of the number 
abandoned, grouping them in accordance with the j^ear 
in which they were filed. 

RENEWAL APPLICATIONS, (Rules 167 and 174-176). 

If a renewal is filed within two vears from the date 
of mailing the notice of allowance, the file and drawings 



44 Journal of the Patent Office Society. 

are sent for by the Application Koom, given a new serial 
immber, and sent to the proper division for re-examina- 
tion. The examiner should note that this is now a new 
application although entitled to the date of the original, 
and that the application is not bound by a division or 
election of species made in the original application. 

The original power of attorney is sufficient. 

If no renewal is filed within two years from the date of 
allowance, the application and drawing are sent by the 
Abandoned Files clerk back to the Examiner's division 
where they are stamped with the word '^ Abandoned'', the 
proper entry made on the register, and then returned to 
be filed away among the abandoned files. 

ISSUE OF PATENT. 

When the final fee is paid within the time allowed by 
law, the fee is acknowledged by the Issue and Gazette 
Division, and checked off on the final fee book, the file is 
given a patent number and a date, (see Eules 164-69), 
and the card for the Official Gazette is made. (The draw- 
ing is obtained from the examining division, a charge be- 
ing left for it, and compared with the file, which is care- 
fully inspected as to date, assignment, and classification. 
The file and drawing are then sent to the Government 
Printing Office, where the heading is printed on the draw- 
ing, and the file and drawing are returned to the Issue 
Division. 

The drawing is next sent to Division E, from which di- 
vision it is forwarded to the photolithographer. The file 
goes to the Assignment Division, where it is examined as 
to assignments, and returned to the Issue Division. From 
there it is sent to the Government Printing Office for the 
printing of the specification. The proof is sent to the 
Issue Division for reading. All errors in the original 
file that are discovered in the Issue Division must be cor- 
rected by the examiner, and therefore in cases of apparent 
error the file with the proof is forwarded to him, atten- 
tion being called on an attached slip to the supposed 
errors. If the examiner agrees as to the corrections to be 
made he makes out an examiner's amendment and has it 
entered, endorses the slip, and returns the file to the Is- 



Journal of the Patent Office Society. 45 

sue Division. A copy of this examiner's amendment is 
not mailed to applicant as the patent is in course of print- 
ing, and it is too late for any reply. 

If the correction is of such nature as not to be curable 
by an examiner's amendment the application may have 
to be withdrawn from issue. This may sometimes be 
avoided if the attorney has his office, or a representative 
in Washington. If that is the case, he should be called in 
immediately, and the error may perhaps be corrected by 
an amendment under Rule 78. 

The error may be such that the examiner does not feel 
warranted in correcting it without reference to the draw- 
ing. In such case consult Division E, where the drawing" 
will be found, or at least information given as to when 
it will be returned by the photolithographing company. 

If the examiner finds the specification correct as it 
stands, he endorses the slip to that effect, and returns the 
file to the Issue Division. 

The proof having been corrected, it is returned to the 
Grovernment Printing Office, where the requisite number 
of copies are made. These copies of the specifications are 
sent to the contracting photolithographing company. The 
company binds them with the copies of the drawing after 
which they are returned to the Patent Office. 

The number of copies printed of each patent is: — 

One on bond paper, accompanying the patent grant for the 
inventor. 

Two on heavy paper, one for the examiner, and one for the 
Attorney's Room. 

One hundred soft copies distributed as follows f — twenty- 
seven copies for foreign exchange; fifteen copies for sale to 
libraries subscribing to the same, (these are made up in week- 
ly bundles of the entire issue and mailed to the libraries) ; one 
copy for the patented file, put in the jacket with the patented 
application, which is filed away in the Record Room for ref- 
erence; one copy for the bound volumes of patents kept in the 
Record Room; one copy for temporary volumes kept in the 
Record Room until permanent volumes are bound; one copy, 
ofthe specification only, to be used for reproduction; fifty-four 
copies delivered to the Publication Division for sale and official 
use. 

The blank form of the patent grant is filled out in the 
Issue and Gazette Division, and the bond paper copy of 
the drawing and the specification placed therein. The 



46 Journal of the Patent Office Society. 

patent is ribboned and sealed before going to the Com- 
missioner for his signature. After he has signed it, it is 
returned to the Issue Division, from which it is mailed. 
The patent is mailed to the attorney of record, unless 
there is a request to mail to the applicant or to the as- 
signee. 

Upon receiving the examiner's copy of a patent belong- 
ing to any of the classes he examines, the examiner will 
note in ink on the figures of the drawings any important 
points of the device which ai^e not apparent on inspection, 
and place the copy on the Primary Examiner's desk. The 
copy will be returned to the examiner after inspection. 

REISSUE, (Rules 85-92). 

The oath required by Eule 87 must be submitted to the 
Law Examiner and the examiner is bound bv his decision. 
Note Order No. 1838, Jan. 13, 1910, (p. 36 ante) as to the 
matter of referring applications to the Assignment Di- 
vision. 

Care should be exercised in examining the drawings in 
a reissue application to see that the drawings are made on 
a scale not smaller than the scale used in the original 
drawing unless a reduction of scale is authorized by the 
Commissioner. See Pule 53. 

INTERFERENCES, (Rules 93-132). 

If on an issue search, or in the course of the prosecu- 
tion of an application, the examiner finds two or more 
applications by different inventors between which he be- 
lieves an interference to exist, and one of which is ready 
for issue, he will draw up a schedule showing the claims 
of each party that he believes the other is entitled to 
make, and if necessary, modified or additional claims that 
might be made by two or more of the applicants. The 
examiner then writes a letter to the Law Examiner, giv- 
ing the data of the applications, embodying the schedule, 
and requesting a conference with reference to the pro- 
posed suggestion of claims. If any two or more of the 
applications involved in the proposed interference are 
assigned to the same assignee, he calls the attention of 
the Law Examiner to that fact. (See notice of April 18, 



r 



Journal of the Patent Office Society. 47 

1919, and form attached thereto.) This letter and a car- 
bon copy thereof is forwarded to the Law Examiner, and 
when he is ready, he sends for the examiner. If the Law 
Examiner decides that no interference exists, the appli- 
cations ready for issue are allowed. If the Law Examiner 
approves the letter as it stands, or in a modified form, 
he indicates this both on the original and on the copy, and 
returns the files and the carbon copy of the letter to the 
examiner who proceeds accordingly. The original of tlie 
letter is retained by the Law Examiner, and the copy is 
filled away b}^ the Primary Examiner. In case the Law 
Examiner believes the claims to be suggested are not pat- 
entable, he gives his reasons to the examiner. If the 
latter still maintains the patentability of the claims, the 
Law Examiner may refer the matter to the Commissioner. 
The Law Examiner may retain the files while he carries 
on the correspondence provided for in Rule 93. When 
the files are returned to the examiner, he suggests claima 
in accordance with Rule 96," noting that copies of the 
letter suggesting claims are to be sent to applicant and 
the assignee as well as the attorney, and that if two par- 
ties have the same attorne}^ the applicants and the attor- 
ney are to be notified of that fact. 

If one of the applications to which claims are to be sug- 
gested is in issue, the examiner writes a letter suggesting 
such claims to the applicant, stating that if such claim is 
made within a certain specified time the case will be 
withdrawn from issue, the amendment entered, and the 
interference declared. Such letter must have the a.p- 
proval of the Commissioner. 

When the examiner suggests a claim appearing in a 
case in issue to an applicant whose application is pending 
before him, the case in issue will not be withdrawn for 
the purpose of interference unless the suggested claim, 
shall be made in the pending application within the time 
specified by the examiner. If the suggested claims are 
made, a letter is written to the Commissioner requesting 
that the application in issue be withdrawn for interfer- 
ence purposes. When signed, this letter is taken to the 
Issue and Gaztte Division with the file. The file is then 
stamped '' Withdrawn ^^ and the examiner has jurisdic- 
tion of it. In either of the cases noted, the Issue and Ga- 
zette Division should be notified to prevent application 



48 Journal of the Patent Office Society. 

of the final fee. (See Order No. 1858, May 23, 1910.) The 
issue file is usually borrowed by the examiner before the 
letter suggesting claims is written, a charge slip is left 
for it, and it is kept on the examiner's desk until returned 
or withdrawn. 

When an application is found having claims to be sug- 
gested to other applications already involved in inter- 
ference, the Primary Examiner writes a letter addressed 
to the Commissioner requesting jurisdiction. A separate 
letter is written for each file and refers only to that file, 
and is placed therein. This letter goes to the Examiner 
of Interference for his approval before being forwarded 
to the Commissioner. 

When jurisdiction of the interference is requested, the 
letter is addressed to the Examiner of Interferences. 

When the Primary Examiner asks jurisdiction of the 
interference for the purpose of adding a new part3% the 
Examiner of Interferences. informs the parties to the in- 
terference of that fact. 

The Primary Examiner may withdraw the interfer- 
ence at any time prior to the opening of the preliminary 
statements referred to in Pule 110. 

If the suggested claims are made before the expiration 
of the period set, the examiner will proceed in accordance 
with Pule 97. If the claims are made after the expira- 
tion of the time set, he will refer the case to the Law Ex- 
aminer. 

• In preparing the notices of interference, the examiner 
should consult Order No. 1514, Jan. 26, 1903, and inspect 
the blanks, (2-213 and 2-251), upon which the notices are 
written. 

In arranging the files in the inverse chronological order 
of their filing, the examiner considers the applications 
directly involved in the interference, leaving the question 
whether there are earlier applications by either party 
which may constitute legal proof of earlier invention, 
for subsequent deterihination by the Examiner of Inter- 
ferences. The examiner should, however, call the atten- 
tion of the Examiner of Interferences to any earlier ap- 
plications by either party which it is thought may be con- 
sidered proof of earlier invention of the subject-matter 
in issue. This mav be done in the letter to the Examiner 



Journal of the Patent Office Society. 49 

of Interferences. (Raulet and Nicholson v. Adams, 1905, 
C. D., 55). 

A¥lien the examiner is of the opinion that claims ap- 
pearing in any of the applications t-o be put into inter- 
ference are not patentable over the issue, he should ap- 
pend to the declaration a statement that such claims, 
(specifying them by number), will be held subject to the 
decision in the interference. This statement is made to 
each party with reference to claims appearing in his ap- 
plication, but it is not to be included in the letter to the 
Examiner of Interferences. (See Notice of May 11, 1917, 
b}^ the First Assistant Commissioner.) 

The examiner should see that photographic prints of 
the drawings in each case are made and placed in the 
files so that the original drawings may remain in the di- 
vision during the interference proceedings. 

When prepared, the files are sent to the Docket Clerk, 
who puts all the files in an envelope or a box, and gives 
a number to the interference, which he places on the en- 
velope or on the box. The Docket Clerk forwards this 
to the Interference Division, where the files and letters 
are inspected to see that the notices are in proper form. 
If not, the files and notices are returned to the Primary 
Examiner for correction. If correct, the Examiner of 
Interferences sets the date for filing of the preliminary 
statements, mails the notices, and returns the interfer- 
ence, which has by the mailing of the notices been form- 
ally declared, to-the Docket Clerk, who notes the date 
set for filing the preliminary statements on the interfer- 
ence file and in the interference register, and who re- 
tains the file until the expiration of the time for filing 
the preliminary statements. He then forwards the file 
to the Interference Division where, after the preliminary 
statements are approved, times for taking testimony are 
set and the day of final hearing is set and notices are 
sent. The file is again returned to the Docket Clerk 
who notes the day set for hearing and retains the file 
to be forwarded again to the Interference Division for 
hearing. 

After the final hearing, the Examiner of Interferences 
sends a copy of his decision to each interferant with date 
of limit of appeal, and sends the file once more to the 
Docket Clerk, who, if no appeal is taken, returns the 



50 JOUENAL OF THE PaTENT OfFICE SoCIETY. 

file to tlie Primary Examiner at the expiration of tlie time 
allowed for appeal. 

Rule 132 states that when the files are returned to the 
Primary Examiner, he shall advise the defeated or un- 
successful party or parties to the interference, that their 
claim or claims which were so involved in the issue, 
stand finally rejected. 

To avoid a confusion of this action with the usual final 
rejection, the examiner should study closely ex parte 
Lyon, C. D., 1906, 422. 

It is important to remember that the right of inter- 
ferants to inspect each other's files does not begin until 
the preliminary statements are opened and approved by 
the Examiner of Interferences, and that such right is 
terminated at the end of the interference. 

When an interference is terminated by an award of 
priority based upon the ground that one of the parties 
has no right to make the claims, and the other party 
files claims broader than those previously submitted, the 
application must be submitted to the Commissioner be- 
fore entering the amendment. 

It should be noted that Rule 128, pointing out the 
procedure in case a reference be found during the pen- 
dency of an interference, has been construed to cover 
cases in which it is found that a count of the interfer- 
ence does not apply properly to the disclosure of one 
party. 

When amendments are filed to an application in in- 
terference, the Primary Examiner, unless they come 
within the excepted cases noted in Rule 109, has them 
marked in pencil, ''Not entered'', and placed in the file 
wrapper of the application, a corresponding entry being 
made on the wrapper. The clerk also makes a pencil 
note in the register. On the termination of the inter- 
ference, these marks are erased, and the amendment en- 
tered and acted upon. (See Order No. 1759, April 17, 
1908.) Amendments which place the application in con- 
dition for another interference may be entered. 

RULE 75. 

When an applicant files an affidavit under Rule 75 to 
overcome a reference which properly comes under that 



Journal of the Patent Office Society. 51 

Eule, the examiner will refer the same to the Law Exam- 
iner designated to jndge as to the sufficiency of such af- 
fidavits, and the decision of the Law Examiner is bind- 
ing on the examiner. (See Order No. 2255, May 18, 
1916.) 

The attention of the examiner is called to the wide dif- 
ference in the character of the oath under Rule 75, and 
that called for by Eule 94 for interference purposes. 

THE OFFICIAL GAZETTE. 

The Official Grazette, which appears every Tuesday, 
contains the name of the applicant, and assignee, if any, 
filing date, the address of the applicant, and assignee, if 
any, the serial number of the application, the patent num- 
ber, the title of the invention, the number of claims in 
the patents, and the class and sub-class, of every patent 
in a week's issue. One of the figures of the drawing, and 
one or more claims appear with this data. Trade-Marks, 
(published that notice of opposition may be filed), Trade- 
Mark Registrations Granted, and lists of Registrations 
of Labels and of Prints, are also printed in the Grazette. 
This forms the body of the Gazette, but as this is the 
only official publication of the Office, other matters are 
included in a few leaves bound with it, such as : import- 
ant communications from abroad, notices to parties that 
the Offi.ce has been unable to reach by, mail, disclaimers, 
adverse decisions in interferences, a statement of the 
condition of the work in the Patent Office, changes in the 
Rules, disbarments of attorneys, and the decisions of the 
Commissioner of Patents and the United States Courts, 
together with a list of adjudicated patent! These leaves 
are distributed separate from the Gazette, as well as in- 
cluded therein, and form the 0. G. leaflets, one of which 
is placed on each examiner's desk when the Official Ga- 
zette is published. 

The matter of the leaflets is arranged by one of the 
Law Examiners, but the arrangement and indexing of 
the Gazette is done by the Issue and Gazette Division. 

''EXAMINER PREPARE ANSWER" LETTERS. 

Communications are frequently received in the Office 
which are not of the nature of actions or attempted ac- 



52 Journal of the Patent Office Society. 

tions in the case, but are usually mere inquiries as to its 
progress. These are sent to the Chief Clerk, but as the 
nature of the inquiry is frequently such that the exam- 
iner in charge of the application is better able to answer 
it, these letters, where appropriate, are referred to him 
for answer. He first ascertains whether the writer is en- 
titled to receive the information, and if he is, the letter 
is answered on the regular form, (2-260). The answer, 
with a carbon copy, (both signed by the Primary Exam- 
iner), and the correspondence in view of which the an- 
swer is written, are placed in an envelope exhibiting the 
address of the party to whom the answer is to be sent, 
and forwarded to the Chief Clerk. The words, ''Chief 
Clerk '^, should be typed immediately beneath the printed 
matter appearing at the upper left hand corner of the 
envelope. 

A statement indicating that an application is open for 
further prosecution when such is the case, should be in- 
cluded in answer to inquiries as to the status of the case. 
Enclosed stamps are mentioned as returned. (See No- 
tice of June 3, 1918, and circular of Feb. 12, 1919.) 



Journal of the Patent Office Society. 53 

APPENDIX 

(Orders and Notices referred to, but of which the sub- 
stance is not given in the text.) 



Order 1455, Feb. 4, 1902. 

It is hereby ordered that no erasures be made or am^ 
note, interlineation, or other mark in pencil or otherwise, 
except by formal amendment duly signed, in the body 
or written portions of the specification or of any other 
paper filed in an application for patent. 

It is further directed that no change be made by any 
person in any record of this Office without the written 
approval of the Commissioner of Patents. 

Attorneys, employees of the Patent Office and all others 
will be held to strict accountability for any violation of 
this order. 

F. I. ALLEN, Commissioner. 



Order No. 1514, Jan. 26, 1903. 

To make uniform the divergent practices in declaring 
interferences in accordance with the rules, it is hereby 
ordered: 

1. That the letter to the Examiner of Interferences 
shall be written upon the blank (2-251) for that purpose. 
This letter shall contain, first, the information as to the 
parties required by the rules; second, the counts of the 
interference; and, third, the counts, when there are more 
than two, tabulated with the respective claims made by 
the parties. For example, in an interference X v. Y v. Z: 

The relation of the counts of the interference to the 
claims of the respective parties is as follows: 



Counts: 


X: 


Y: 


Z: 


1 


16 


3 


2 


2 


5 


1 




3 


9 


15 


5 


4 


4 


11 


e 



54 Journal of the Patent Office Society. 

2. That the letters to the different parties shall be 
written upon the blanks for that purpose and after the 
printed matter upon said blank, there shall appear, first, 
the counts of the interference; second, the information 
of the other parties, as required by the rules; and, third, 
the counts and claims of the parties tabulated as above. 
For example, after the counts, the letter to X would read: 

(a) The interference involves your application above 
identified and, 

(b) An application for Bicycle Saddle filed by Y, of 
282 Broadway, New York, whose attorney is 
, of , and whose assignee is , of . 

(c) An application (patent) for Bic^^cle Saddle filed 
by Z, of 1205 Chestnut Street, Philadelphia, Pa., 
whose attorney is , of , and whose as- 
signee is , of . 

(d) The relation of the counts of the interference to 
the claims of the respective parties is as follows: 



Counts: 


X: 


Y: 


Z 


1 


16 


3 


2 


2 


5 


1 


3 


3 


9 


15 


5 


4 


4 


11 


6 



3. In no case shall a letter be written on both sides 
of the sheet, or, with the exception of the letter to the 
Examiner of Interferences, be dated. All letters, except 
that to the Examiner of Interferences, shall contain the 
words "Forwarded to the Examiner of Interferences 
from Div. , (date) ," either stamped or type- 
written in the upper left hand corner, and also when 
there is an assignee or a patentee, it shall be stated on the 
original letters to be kept in the files, that a copy has been 
sent such party or parties. 

4. All letters, both those for the files and those to be 
mailed shall be forwarded as required by the rules, the 
originals separate from the files, and the carbon copies 
to be mailed preferably attached to their respective en- 
velopes, but in no case to be folded or placed within the 
envelopes. 



JouEXAL or THE Patext Office Society. 55 

5. Blue prints of the drawings and interference cards 
shall be placed in the files of the respective parties. 

6. To secure prompt declaration of interferences, the 
papers should be forwarded to the docket clerk not later 
than Thursday of each week. 

F. I. ALLEN, Commissioner. 



Order No. 1733, July 19, 1907. 

Hereafter all papers in applications must be arranged 
and marked uniformly in the following manner: 

The specification and all amendments that are to be 
printed must be kept separate from office letters, appeals 
and miscellaneous correspondence. The specification and 
amendments must be fastened to the second or middle 
page of the packet with the original specification and 
claims on the bottom and tJie last amendment on the top. 
Office letters and other papers not needed b^^ the printer 
must be fastened to the third page of the .jacket, the 
last communication being on top. A communication con- 
taining amendments and explanations should ordinarily 
not be divided. If the amendments an^ explanatory mat- 
ter be presented in the same paper, it should be treated 
as an amendment and placed on the amendment side, or 
second page of the jacket, care being taken so to mark 
and enclose the parts to be printed by red ink that the 
printer can readily distinguish the amendment from the. 
explanatory matter. All the papers in the case will be 
numbered serially as heretofore. 

Amendments will be lettered serially in the order of 
their receipt, all the amendments of the same date bear- 
ing the same serial letter. If the amendment is short, it 
should be transcribed in red ink at the proper place, and 
the notation ''per A'', ''per B'' &c., should be written 
in red ink on the margin, Amendments that are tran- 
scribed should never be marked A^, A^, B^, B^. Amend- 
ments that are too long to be transcribed should be mark- 
ed AS A^, B^, B^, &c., on the margin, the first amendment 
of this character in amendment sheet "A^' being A^, the 
second, A^, &c. At the margin point at which the amend- 



56 Journal of the Patent Office Society. 

ment is to be inserted should be written "Insert A^'^ 
'' A^'', &c., as the case may be, and the same letters placed 
in the angle of a caret at the proper point of insertion, 
so that when several insertions are placed in the same 
lines these different insertions may be readily distin- 
guished. 

All insertions and substitutions should be marked on 
the original application, if practicable. For instance, if 
Amendment A provides that claims 1 to 5 should be can- 
celed and new claims substituted, a red line should be 
drawn transversely^ across claims 1 to 5 and in the margin 
should be written "Sub A^". If at a later date the claims 
contained in Amendment A^ are canceled and a series of 
claims contained in Amendment B^ are substituted, the 
claims in Amendment A^ should be canceled and the 
proper notation made in the margin, and in addition the 
notation "Sub A^" on the original paper should be can- 
celed and in its place should be written "Sub B^". The 
last requirement is very important, as the work of the 
printer is needlessly delayed and complicated if he is 
compelled to search from paper to paper for the proper 
insertion. 

If amendments are submitted in duplicate, the word 
"Duplicate'' should be written or stamped across the 
duplicate copy and it should be placed with miscellaneous 
papers on the_third page of the file jacket. 

All these rules will be strictly enforced and any appli- 
cation papers not prepared and arranged in conformity 
with them will be returned to the examiner for correc- 
tion. Any deviation from these rules will be charged 
against the efficiency record of the clerk performing these 
duties. In case the clerk is in doubt regarding the man- 
ner in which the papers should be marked and arranged, 
full information ma}^ be obtained from the Chief Clerk. 

E. B. MOORE, Commissioner. 



Order No. 1759, AprH 17, 1908. 

Instructions to primary examiners regarding amend- 
ments and other papers filed with them relating to inter- 
ferences and applications involved therein: 



I 



Journal of the Patent Office Society. 57 

(1) In order that amendments filed while an appli- 
cation is involved in an interference proceeding may not 
be overlooked after the interference is terminated, the 
primary examiner is directed to have all such amend- 
ments, unless they come within the excepted cases noted 
at the end of Rule 109, marked at once in pencil ''Not 
entered ^^ and placed in the file-wrapper of the applica- 
tion, and a corresponding entry made on the file-wrapper. 
A note should also be made in the examiner's register of 
office actions and amendments. After the termination of 
the interference these temporary entries shall be erased 
and the amendments permanently entered and considered 
as in the case of ordinary amendments filed during the 
ex parte prosecution of an application. 

(2) In order to avoid confusion and loss of papers re- 
lating to interference matters pending before him, the 
primary examiner is directed to have all such papers 
stamped with the date of their receipt and entered in 
their proper order in the interference file. 

(signed) E. B. MOORE, Commissioner. 



Order No. 1961, Mar. 1, 1912. 

Where an unsigned or improperly signed amendment 
is received, and there is not sufficient time for the return 
of such amendment for signature before the expiration 
of the time allowed by law within which to take proper 
action, the examiner will indorse such informal amend- 
ment on the file wrapper and notify the applicant of the 
status of the case. 

Informal amendments which are to be returned will 
be forwarded to the Chief Clerk with a memorandum 
giving the name and address of the attorney, the date of 
the last Office action in the case, and a statement as to 
why the paper is to be returned. The Chief Clerk will 
cancel the impressions of the receiving stamps and con- 
duct the correspondence incident to the return of the T3a- 
pers. 

EDWARD B. MOORE, Commissioner. 



58 Journal of the Patent Office Society. 

Order No. 2071, Sept. 19, 1913. 

Order No, 2010 of October 18, 1912, is modified as fol- 
lows: 

When an application is filed which in the opinion of the 
examiner is a continuation of, or a substitute for a prev- 
iously filed application, the examiner will not require ap- 
plicant to insert a reference to the prior application in 
the specification, it being regarded as sufficient if his ref- 
erence appears somewhere in the record of the applica- 
tion. The examiner will make the appropriate entry 
upon the face of the file wrapper. The heading of the 
printed patent will conform to this entry. 

THOMAS ET'\n[NG, Commissioner. 



Order No. 2207, June 23, 1915. 

Hereafter copies of foreign patents sent from the lib- 
rary to the examining divisions will be listed on a tripli- 
cate slip (Form 2-568), the sheets which will be headed, 

respectively, ' ' Eeceipt for patent received from the 

Library by Division . . . . ; Classification of patents for 
the Library by Division. . . . ; Invoice of . . . .patents sent 

by the Library to Division '' Upon the receipt of 

the foreign patents, the examiner will stamp the receipt 
portion of the slip with his division dating stamp and 
return it to the library messenger. Within 30 days from 
the receipt of the foreign patents, the examiner will re- 
turn to the library any patents which he believes improp- 
erly assigned to his division, with the classification por- 
tion of the slip upon which he shall have canceled the 
numbers of such patents and upon which he shall have 
indicated opposite the number of each patent which is 
retained in his division the class and subclass in which it 
has been placed. The invoice portion of the slip will 
be retained by the examiner as a record of the patents 
received by his division. 

Transfers of foreign patents will be made by the use 



Journal of the Patent Office Society. 59 

of the regular transfer blank (Form 2-566) under the su- 
pervision of the examiner of classification. 

Where the transfer is within the division, both the 
class from which and the class to which the patents are 
transferred will be noted on the transfer blank, and one 
portion thereof sent to the library and the other retained 
for record in the division. 

Where the transfer is from one division to another, the 
first division will note on the transfer blank only the 
class and sub-class from which the patents are taken. 
The first portion of the transfer blank will then be sent 
to the library and the remaining portions sent to the 
second division with the patents to be transferred. The 
second division upon the receipt of the patents will note 
on the transfer blank the class and sub-class to which 
the patents are transferred. One portion of this transfer 
blank will then be sent to the library, another to the divis- 
ion from which the patents were transferred, and the 
third retained for record. 

When a change is made in the classification of the in- 
ventions, the transfer of the foreign patents affected must 
be made within 60 days from the date of the classification 
order. 

THOMAS E^T:NG, Commissioner. 



Order No. 2210, June 28, 1915. 

After January 1, 1916, all applications which have been 
pending for more than three years or which have an ef- 
fective filing date running more than three years shall be 
made special and any amendment or other action there- 
in by or on behalf of the applicant which does not put the 
application in condition for allowance or final rejection 
shall be submitted to a Law Examiner for his approval 
of its entry. 

THOMAS EWING, Commissioner. 



60 JOUBNAL OF THE PaTENT OfFICE SoCIETY. 

SPECIAL CASES. 

Cammissianer's Order No. 2210: 
January 4, 1916, 222 0. G., Na. 1, p. 1. 

To tlie Examiners: 

In order to make the practice uniform, it is suggested 
that Examiners ordinarily report by hrief letter, stating 
age of the application and why final action is not pos- 
sible, accompanied by an attached copy of the action 
proposed to be taken if amendment be entered, (thus to 
avoid recopying the letter to the applicant). The ap- 
plicant should be advised that the case is *'speciar\ and 
urged to amend promptly. 

F. W. H. CLAY, Assistant Commissioner. 



Order No. 2308, Mar. 12, 1917. 

Order No. 1718, dated June 8, 1907, is hereby super- 
seded by the following: 

It is hereby ordered that, except by formal amendment 
duly signed or as hereinafter provided, no corrections, 
erasures, or interlineations be made in the body or writ- 
ten portions of the specification or of any other paper 
filed in an application for patent. 

Obvious informalities in the application may be cor- 
rected by the examiner, but said correction must be in 
the form of an amendment, approved by the Principal 
Examiner in writing, placed in the file, and made a part 
of the record. The changes specified in the amendment 
will be entered by the clerk in the regular way. 

It is directed that no other changes be made by any 
person in any record of this Office without the written 
approval of the Commissioner of Patents. 

Attorneys, employees of the Patetnt Office, and all 
others will be held to strict accountabilit}^ for any vio- 
lation of this order. 

THOMAlS EWING, Commissioner. 



Journal of the Patent Office Society. 61 

Order No. 2438, Nov. 18, 1918. 

It is obvious that when an allowable application leaves 
an examining division for the issue division, it should be 
in condition for issue. For a long time, however, a num- 
ber of clerks in the issue division have been carefully re- 
vising all allowed applications. This practice has en- 
tailed very considerable delays, unnecessary duplications 
of labor, extra messenger work and added opportunities 
for the loss of files and drawings. In order to eliminate 
these objections, the following procedure will hereafter 
be followed: 

Before affixing his signature to an allowable applica- 
tion, the primary examiner will direct his clerk to care- 
fully revise the entire appli-cation as required by the ac- 
companying set of directions. When the application is 
found by the clerk to meet the requirements prescribed, 
she will so advise the examiner who will then, and not 
until then, affix his signature to the file. The examiner's 
typist will thereafter prepare and attach to the third 
fold of the file wrapper an original notice of allowance 
(Form 2-181) and will mail, on the day of its dates, a 
carbon copy thereof, after endorsing that date upon the 
face of the file wrapper. The file will then be forwarded 
to the issue division. The drawing, if any, will be re- 
tained in the examiner's room. 

The expensive operations of printing and photolitho- 
graphing are the next essential steps and they will here- 
after follow without any intermediary, agency for the 
detection of errors. All persons affected by this change 
are asked to perform their new tasks with due care. An 
undivided responsibility will henceforth rest upon divis- 
ions from which allowable applications emanate. 

Examiners should notify their clerks immediately upon 
ascertaining'^that an application is ready for final revis- 
ion. The work of revision should be done as early in the 
week as possible. This will tend to ensure the counting 
off of actions as desired and will avoid a wholly unnec- 
essary rush of work on report day. 
Effective Nov. 25, 1918. 

J. S. NEWTON, Commissioner. 



62 Journal of the Patent Office Society. 

Directions for Revision of Applications. 

Initial both the file and drawing on back. If there are 
canceled sheets, initial last uncanceled sheet. 

Compare serial number on the file, on each sheet of 
drawings, and on classification slip pinned to first sheet 
of drawings. 

Compare initials and spelling of surname of inventor 
on all sheets of drawings, on file jacket, in preamble, and 
in signatures to the petition, specification and oath. 

First name of inventor MUST be in full on file jacket 
and in preamble. It need not appear in full elsewhere 
(Orders 600, 2018), but where an apparent inconsistency 
appears an affidavit is necessary. EX PARTE Clark, 124 
O. G., 910. 

When a first name is given which appears to you ob- 
viously to be an abbreviation, not a Christian name, or 
one so seldom used otherwise that it must presumed to be 
an abbreviation, and the file does not contain a sworn 
statement from the applicant that the name given is 
liis full first name, refer the case to the Examiner for 
action under EX PARTE Bowen, 247 0. G., 245. If the 
Examiner considers the name given to be the correct, full, 
first name, fasten a statement to that effect, signed by 
him, in the file jacket. 

A middle name or initial, or both, may appear in the 
record. Neither is necessary. If they appear, they must 
correspond to the extent of being consistent. A middle 
name or initial as signed to the specification must appear 
on the file wrapper. 

Count figures of drawings and place number of figures 
on lower right hand margin of first sheet of drawing. 
See that there are no duplicate figures and no figures 
numbered in duplicate. Be sure ALL figures are describ- 
ed in specification, and that all figures which are describ- 
ed in specification appear on the drawing. 

No drawing should be signed by an attorney entering 
the case after that drawing is filed, nor should the name 
of the attorney filing a drawing be erased therefrom (Or- 
der 480). 

Canceled revenue stamps should appear on all powers 
of attorney filed between Oct. 22, 1914 and Sept. 8, 1916, 
inclusive, and also on those filed on and after Dec. 1, 1917, 
except powers of attorney executed abroad. 



Journal of the Patent Office Society. 63 

Figure to appear in Gazette must be noted on upper left 
hand margin of the sheet exhibiting the figure selected. 

See that class and sub-class numbers are entered and 
agree on the_file and on sheet 1 of the drawings in un- 
classified classes, and on the file and sheet 1 of the draw- 
ings and the blue slip pinned to that sheet in classified 
classes. 

Have all penciled notes and interlineations on papers 
in the file jacket or on the drawings erased by Exam- 
iner. See Orders 560, 1455, 1718. 

See that all uncanceled sheets of the drawing have 
draftsman's approval stamped on back. 

See that the number of the examining division is plain- 
ly entered on file and at top margin, right corner, of all 
sheets of drawings. 

Refer all drawings where there are sheets of drawings 
having (1) canceled figures, or (2) informalities, or (3) 
where it appears that there is room on an original sheet 
or sheets for figures presented on an additional sheet or 
sheets, or (4) where less than l^'^ inches of absolutely 
clear space remains for the printed heading at the top 
of any uncanceled sheet, to the draftsman, together with 
an attached slip indicating the matter upon which he is 
to pass, and requesting his approval or disapproval. 

See that all accepted sheets of drawings are entered in 
the application, and the proper number of sheets noted 
on the face of file. 

Compare title of invention on back of old form of file, 
or at bottom of present form of file jacket, with title in 
preamble to specification. They should agree. 

See that date of ''Application filed complete'' is cor- 
rectly entered on the face of the file jacket. 

Compare residence on file jacket with that in preamble. 

Count allowed claims and compare with number stated 
on file jacket. 

One claim should be specified on file jacket for 0. G. 
If more are specified consult examiner. (Order 2422). 

In the oath, the jurat must be filled out, the word 
^'sole^' must appear if there be but one inventor, and 
''joint" if two or more inventors. An oath which refers 
to applicant as "the petitioner" need not contain appli- 
cant's name in the body thereof. When the person before 
whom the oath or affirmation is made in this country is 



64 Journal of the Patent Office Society. 

not provided with a seal, his official character shall be 
esta;blished by competent evidence, as by a certificate 
from a clerk of a court of record, or other proper officer 
having a seal. The authority of any officer, not a U. S. 
minister, charge d'affaires, consul, or commercial agent, 
administering an oath to an applicant residing abroad 
must be proved by certificate of a U. S. diplomatic or 
consular officer. Rule 47. Venue and seal must agree. 
Note time between date of oath and filing of application. 
Three (now five)* weeks and time required for transmis- 
sion in the mails is allowed (EX PARTE Branna, 97 0. 
Gr., 2533), but in divisional, continuation, substitute and 
reissue cases, this rule does not applv (EX PARTE 
Davison, 177 O.O., 241). 

Foreign applications must be ribboned and the ends 
of the ribbon brought together under the seal of the of- 
ficer administering the oath, or if not ribboned the seal 
must be on every sheet of the specification. Rule 47. 

In divisional, continuation and substitute cases, see 
that the filing date and serial number of original appli- 
cation are on the margin of file jacket and agree with 
that given in the record of the application. (Orders 
1832, 2010 and 2071). 

Send file, WITHOUT DRAWINGS, in all divisional, 
continuation, substitute and reissue cases, and cases 
where the record shows that the applicant is insane or 
shows or suggests that he is deceased, to Assignment 
Division for determination as to whether there may be 
any assignments, letters testamentary or letters of ad- 
ministration, etc., which should be entered on the face of 
the file wrapper, or for report as to title. (Order 1838). 
In reissue applications written consent of assignee, if 
any, to filing must appear and abstracts of title must be 
brought up to date of allowance. 

The papers required by the printer should be on the 
second (middle) fold of the file jacket, and those not re- 
quired on the third (right hand) fold, in numerical order. 
(Order 1733). 

If a change has been made in the name or residence of 
the inventor by amendment, the file jacket should be cor- 
rected in red ink to correspond. 

Check entries of all papers, examiners' letters and 
amendments, on back of file with file contents. 

*Ex parte Heinze, 265 O. G., 145. 



Journal of the Patent Office Society. 65 

If inaccuracies are found, refer the case to the Exam- 
iner. Make no changes except in strict accordance with 
Order 1718. 



Notice, February 20, 1918. 

Attention is called to the order, a copy of which ap- 
pears on page 4 of the Manual of Classification of Janu- 
ary 1, 1916, forbidding the transfer of patents from one 
subclass to another or from one class to another, without 
approval of the Classification Division. 

Such unauthorized transfers render the subclasses in 
the attorney's room no longer duplicates of those in the 
examiner's rooms, and also render incorrect the official 
subclass lists on file in Division F. 

Examiners are directed to submit to the Classification 
Division all questions of trajisfer of patents. 

J. T. NEWTON, Commissioner of Patents. 



Notice, Apr. 17, 1919. 
Submission of Proposed Interferences. 

To Primary Examiners : 

The accompanying form is suggested for submission of 
proposed interferences to the law examiner. 

In preparing cases for submission to the law examiner 
and in subsequent treatment of the cases involved atten- 
tion should be given to the following points: 

(1) The name of the examiner to be called for a con- 
ference should be given as indicated, on the form. 

(2) It should be stated which of the applications is 
ready for allowance. 

(3) If an application is a division or continuation of 
an earlier one, this fact should be stated. 

(4) If two or more applications are owned by the 
same assignee, or are represented by the same attorney, 
it should be so stated. Where cases are prosecuted by 



66 JOUKNAL OF THE PaTENT OfFICE SoCIETY. 

the same attorney or are owned by the same assignee and 
the claims of one application are restricted to patentably 
distinguish from the claims of the other, no interference 
need be suggested, but where the claims are drawn to the 
same patentable invention, all of the conflicting claims 
should be specified. Where an interference is proposed 
with a patent, before submission it should be determined 
from the assignment records whether the application and 
patent are owned by the same assignee. 

(5) In the suggestion of counts only counts which 
are necessary to determine the question of priority should 
be selected; claims which are not patentable over the 
proposed claims should be omitted and the applicants 
should be advised when the interference is declared that 
such claims are not patentable over the issue and will 
be held subject to the outcome of the interference (see 
Notice of First Assistant Commissioner Whitehead, dated 
May 11, 1917). Claims are not patentably distinct un- 
less they differ sufficiently to sustain separate patents. 
Where serious doubt exists as to patentable distinction 
the doubtful claims should be included. Cases should 
be thoroughly reviewed by the primary examiner. 

(6) Any other points which have a bearing on the 
declaration of the interference should be stated. 

(7) Amendments or other papers filed in cases held 
by the law examiner should be promptly forwarded to 
him. 

(8) Letters of submission should be in duplicate. 

• (9) Where there is a difference between the dates of 
applications of the senior and junior parties of about two 
months or more, the law examiner will require a state- 
ment from the junior party of his date of conception. If 
this date fails to overcome the filing date of the senior 
party, the senior application will be sent to patent as 
speedily as possible and the conflicting claims of the 
junior application will be rejected on the patent when 
granted. In the meantime the junior partj^'s application 
will be acted upon or action suspended as the condition 
of the case requires. The interference will be disap- 
proved only after the date of issue of the patent has been 
definitely determined. 

J. S. NEWTON, Commissioner. 



n 



Journal of the Patent Office Society. 67 

DEPARTMENT OF THE INTERIOR 

*' UNITED STATES PATENT OEFICE 

Washington 

(Date) 
Mr. L. D. Underwood, 

Law Examiner. 
Sir: 

Conflict is found to exist between tlie following appli- 
cations and it is proposed to suggest claims as indicated 
below: 

156,202, F. A. Jones 
203,503, T. A. Smith, 
268,554, J. L. Myers, 
The application of Jones is ready for allowance. 
Taylor Respectfully, 

1st Ass^t. . 

Examiner. 
Jones Smith Myers 
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